Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 1 of 19
`
` )
`
`Plaintiff
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`Defendants.
`)
`_________________________________________
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`_________________________________________
`
`
`
`WORLDS, INC.,
`
`
`
`
`
`Civil Action No. 12-10576-DJC
`
`v.
`
`
`ACTIVISION BLIZZARD, INC.,
`BLIZZARD ENTERTAINMENT, INC. and
`ACTIVISION PUBLISHING, INC.,
`
`
`
`
`
`CASPER, J.
`
`I.
`
`Introduction
`
`MEMORANDUM AND ORDER
`
`April 30, 2021
`
`
`
`Plaintiff Worlds, Inc., (“Worlds”) alleges that Defendants Activision Blizzard, Inc.,
`
`Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Activision”) infringe
`
`United States Patents Nos. 7,181,690 (“‘690”), 7,493,558 (“‘558”), 7,945,856 (“‘856”), 8,082,501
`
`(“‘501”) and 8,145,998 (“‘998”) (collectively, the “Patents-In-Suit”). Activision has moved for
`
`summary judgment seeking a ruling that the remaining claims of the Patents-In-Suit at issue are
`
`invalid as a matter of law. D. 272. For the following reasons, the Court ALLOWS Activision’s
`
`motion.
`
`II.
`
`Factual Background
`
`The following material facts are based upon Activision’s Statement of Material Facts, D.
`
`177, Worlds’ Statement of Material Facts, D. 185, and/or the documents referenced in same and
`
`are undisputed.
`
`
`
`
`
`1
`
`Patent Owner's Exhibit 2100
`Page 1 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 2 of 19
`
`
`
`
`
`A.
`
`Patents-In-Suit
`
`At this juncture, Worlds presses that Activision infringes the following twenty-one claims
`
`of the Patents-In-Suit: ‘690 claims 4, 8, 13 and 16; ‘558 claims 5 and 7; ‘856 claim 1; ‘501 claims
`
`1-8, 10, 12 and 14-16; and ‘998 claim 18. D. 269 at 2; D. 283 at 10. As Worlds has explained,
`
`the Patents-In-Suit resolve bandwidth issues with multiplayer games through “multi-criteria
`
`filtering of avatar position and state information, but at the client side and the server side,” i.e.,
`
`“crowd control.” D. 183 at 5. The remaining claims at issue achieve crowd control by some form
`
`of filtering of information, D. 183 at 8, but in slightly different ways: i.e., by “fewer than all” in
`
`the ‘856 patent; a “maximum number” in the ‘690 patent and ‘558 patent; and by “condition” in
`
`the ‘501 patent and the ‘998 patent. D. 273 at 6.
`
`U.S. Patent No. 7,181,690 (“the’690 patent”)
`
`
`
`The ‘690 patent, “a system and method for enabling users to interact in a virtual space,”
`
`was filed on August 3, 2000 and issued on February 20, 2007. D. 275 ¶ 1; D. 274-1 at 2. It
`
`provides a “highly scalable architecture for a three-dimensional, graphical, multi-user, interactive
`
`virtual world system.” Id. So that a user’s view “can be updated to reflect the motion of the remote
`
`user’s avatars, motion, information is transmitted to a central server process which provides
`
`positions updates to client processes for neighbors of the user at that client process.” Id. “The
`
`client process also uses an environment database to determine which background objects to render
`
`as well as to limit the movement of the user’s avatar.” Id.
`
`Claims 4, 8, 13 and 16 of the ‘690 patent are currently at issue. Claim 4 (incorporating
`
`the method of claim 1 which is a “method for enabling a first user to interact with other users in a
`
`virtual space”) involves determining the maximum number of the other users’ avatars to be
`
`displayed by comparing the actual number to the maximum number of other users’ avatars to be
`
`
`
`2
`
`Patent Owner's Exhibit 2100
`Page 2 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 3 of 19
`
`displayed. D. 274-01 at 13. Claim 8 (incorporating the method of claim 6 which is a “method for
`
`enabling a plurality of users to interact in a virtual space”) also involves a maximum number of
`
`avatars by comparing the actual number of avatars that are not associated with the client process
`
`based on the positions transmitted by the server process to the maximum number of avatars that
`
`can be displayed. D. 274-1 at 13. Claim 13 (incorporating the software program of claim 11)
`
`provides instructions for determining the other users’ avatars to be displayed by comparing the
`
`actual number of the other users’ avatars (from the received positions) to the maximum number of
`
`the other users’ avatars to be displayed. D. 274-1 at 14. Claim 16 (incorporating the software
`
`program of claim 15) provides instructions for determining which avatars to be displayed from
`
`comparing the determination of the actual number of avatars that are not associated with the client
`
`process based on the positions transmitted by the server process to the maximum number of avatars
`
`that can be displayed. D. 274-1 at 14.
`
`
`
`
`
`
`
` U.S. Patent No. 7,493,558 (“the ‘558 patent”)
`
`
`
`The ‘558 patent, a “system and method for enabling users to interact in a virtual space,”
`
`was filed on November 2, 2006 and issued on February 17, 2009. D. 275 ¶ 22; D. 274-2 at 1.
`
`Worlds continues to assert claims 5 and 7 of the ‘558 patent in this litigation. Similar to the claims
`
`in the ‘690 patent, these claims achieve crowd control by filtering through a maximum number.
`
`Claim 5 (incorporates the machine-readable medium of claim 40) provides that the avatars to be
`
`displayed is determined by comparing “an actual number of avatars in the set associated said each
`
`client process based on the positions transmitted by the server process” to “a maximum number of
`
`avatars that can be displayed to the user associated with said each client process.” D. 274-2 at 14.
`
`Claim 7 (incorporates the computer readable medium of claim 6) determines the avatars to be
`
`displayed by comparing “an actual number of avatars that are not associated with the client process
`
`
`
`3
`
`Patent Owner's Exhibit 2100
`Page 3 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 4 of 19
`
`based on the positions transmitted by the server process” with “a maximum number of avatars that
`
`can be displayed.” D. 274-2 at 14.
`
`U.S. Patent No. 7,945,856 (“the ‘856 patent”)
`
`
`
`The ‘856 patent, a “system and method for enabling users to interact in a virtual space.”
`
`was filed on January 13, 2009 and issued on May 17, 2011. D. 275 ¶ 36; D. 274-3 at 1. This
`
`patent serves to achieve crowd control by filtering information by “fewer than all” methods.
`
`Worlds presses claim 1 of the ‘856 patent. Claim 1 is a “method for enabling a first user to interact
`
`with second users in a virtual space . . . , the method comprising: (a) receiving by the first client
`
`process from the server process received positions of selected second avatars; and (b) determining,
`
`from the received positions, a set of the second avatars that are to be displayed to the first user,
`
`wherein the first client process receives positions of fewer than all of the second avatars. D. 274-
`
`3 at 24.
`
`U.S. Patent No. 8,082, 501 (“the ‘501 patent”)
`
`
`
`The ‘501 patent, a “system and method for enabling users to interact in a virtual space,”
`
`was filed on March 19, 2009 and issued on December 20, 2011. D. 275 ¶ 52; D. 274-4 at 1. This
`
`patent also achieves crowd control through filtering information by a condition or conditions.
`
`Worlds asserts claims 1-8, 10, 12, and 14-16 of the ‘501 patent.
`
`
`
`Claim 1-8 concern a “method for enabling a first user to interact with other users in a virtual
`
`space, . . ., the method comprising the steps” that vary with each claim. D. 274-4 at 23. In claim
`
`one, the steps involve customizing “an avatar in response to input by the first user,” receiving
`
`“position information associated with fewer than all of the other user avatars in an interaction room
`
`of the virtual space, from a server process, wherein the client device does not receive position
`
`information of at least some avatars that fail to satisfy a participant condition imposed on avatars
`
`
`
`4
`
`Patent Owner's Exhibit 2100
`Page 4 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 5 of 19
`
`displayable on a client device display of the client device; determining, . . . a displayable set of the
`
`other user avatars associated with the client device displayed; and displaying, . . . the displayable
`
`set of the other user avatars associated with the client device display.” Id. Claims 2-8 and 10 add
`
`or alter the conditions of the method in Claim 1. Id.
`
`
`
`Claim 12 is a “client device for enabling a first user to interact with other users in a virtual
`
`space” and is comprised of “a memory storing instructions” and “a processor programmed using
`
`the instructions” for various conditions for “determin[ing] a set of the other users’ avatars
`
`displayable on a screen associated with the client device.” Id. at 23. Claim 14 is an “article of
`
`manufacture comprising at least one memory storing computer code for enabling a first user to
`
`interact with other users in a virtual space, . . . the computer code comprising instructions for
`
`conditions for customizing, receiving, determining and then displaying the other user avatars.” Id.
`
`Claims 15 and 16 incorporate the article of manufacture in Claim 14 and add or alter the conditions
`
`for displaying the other user avatars. Id.
`
`
`
`
`
`
`
`U.S. Patent No. 8,145,998 (“the ‘998 patent”)
`
`The ‘998 patent, a “system and method for enabling users to interact in a virtual space, was
`
`filed on March 19, 2009 and issued on March 27, 2012. D. 275 ¶ 92; D. 274-5 at 1. Similar to
`
`claims in the ‘501 patent, the claims in this patent achieve crowd control through filtering
`
`information by conditions. Worlds asserts Claim 18 here. D. 283 at 10. Claim 18 is a “system
`
`for displaying interactions in a virtual world among a local user and a plurality of remote users,
`
`comprising a database . . .; a memory storing instructions and a processor programmed using
`
`instructions to receive position information [based on certain conditions], receive orientation
`
`information [based on certain conditions], generate on a graphic display a rendering of a
`
`perspective view of the virtual world in three dimensions [based on certain conditions], and change
`
`
`
`5
`
`Patent Owner's Exhibit 2100
`Page 5 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 6 of 19
`
`in three dimensions the perspective view of the rendering of the graphic display of the virtual world
`
`in response to user input.” D. 274-5 at 22-23.
`
`
`
`B.
`
`Inter Partes Review before the PTAB
`
`In May and June 2015, a third party, Bungie, Inc., filed a series of IPR petitions challenging
`
`the validity of the asserted claims of the Patents-In-Suit under 35 U.S.C. § 102 and 103. The Patent
`
`Trial and Appeal Board (“PTAB”) held six IPRs covering all forty claims asserted in this lawsuit
`
`before the stay, issuing final written decisions in all six proceedings. The PTAB determined that
`
`34 of the claims were unpatentable: claim 1 of the ‘856 patent, claims 1-3, 5-7, 10-12, 14, 15, 17
`
`and 19 of the ‘690 patent, claims 4, 6, 8 and 9 of the ‘558 patent, claims 1, 18 and 20 of the ‘998
`
`patent, and claims 1-8, 10, 12, 14-16 of the ‘501 patent. D. 273 at 8-9.
`
`The PTAB determined that the petitioner did not demonstrate by a preponderance of
`
`evidence that claims 4, 8, 13 and 16 of the ‘690 patent and claims 5 and 7 of the ‘558 patent were
`
`invalid based on the evidence and arguments presented in the proceedings. Id. at 9. Worlds
`
`appealed the PTAB’s decisions regarding the ‘856 patent (IPR2015-01264), the ‘501 patent
`
`(IPR2015-01319) and the ‘998 patent (IPR2015-01321). In Worlds Inc. v. Bungie, Inc., 903 F.3d
`
`1237 (Fed. Cir. 2018), the Federal Circuit vacated and remanded these final written decisions on
`
`procedural grounds, and without addressing the PTAB’s substantive findings. Id. On September
`
`7, 2018, the Federal Circuit vacated and remanded Final Written Decisions in IPR2015-01264
`
`(related to ‘856 patent), IPR2015-01319 (related to ‘501 patent) and IPR2015-01321 (related to
`
`‘998 patent) back to the PTAB. D. 283 at 15 (citing Worlds, 903 F.3d at 1237). On January 14,
`
`2020, the PTAB issued a Termination Vacating Institutions and Dismissing Proceedings on
`
`Remand in IPR2015-01264 (related to ‘856 patent), IPT2015-01319 (related to ‘501 patent) and
`
`IPR2015-01321 (related to ‘998 patent). Id.
`
`
`
`6
`
`Patent Owner's Exhibit 2100
`Page 6 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 7 of 19
`
`
`
`1.
`
`PTAB findings
`
`The PTAB’s IPR decision may be relied upon as persuasive authority before this Court.
`
`Ultratec, Inc. v. Sorenson Comms., Inc., No 14-cv-66-jdp, 2015 WL 5330284, at *14 (W.D. Wis.
`
`Sept. 11, 2015) (noting that the court was “not bound by the PTAB decision, but its reasoning is
`
`persuasive”); DSS Tech. Mgmt., Inc. v. Apple, Inc., No. 14-cv-05330-HSG, 2015 WL 1967878,
`
`at *4 (N.D. Cal. May 1, 2015) (observing that “PTAB's invalidity analyses ‘would likely prove
`
`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.
`
`CV 14-00471 SJO (PJWx), 2014 WL 4638170, at *6 (C.D. Cal. May 8, 2014)); Black Hills, 2014
`
`WL 4638170, at *6 (noting that the “Court may also derive benefit from the PTAB's claim
`
`construction for the patents under review” and that “[w]hile the PTAB interprets claim terms using
`
`the ‘broadest reasonable construction,’ 37 C.F.R. § 42.100(b), its analysis would likely prove
`
`helpful to this Court, no matter its final determination”); CANVS Corp. v. United States, 118 Fed.
`
`Cl. 587, 593 (2014) (observing that “even if [certain claims] were to survive PTAB review, the
`
`PTAB's final decision sustaining these claims would contain analysis that would be helpful to the
`
`court”). Accordingly, although not bound by its findings or rulings, this Court may consider the
`
`PTAB findings as persuasive authority in determining whether the Patents-In-Suit are patent
`
`eligible.
`
`With nineteen of the forty original asserted claims having been fully adjudicated, Worlds
`
`is asserting the remaining twenty-one claims in this suit: claim 1 of the ‘856 patent, claims 4, 8,
`
`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
`
`‘501 patent and claim 18 of the ‘998 patent. D. 269 at 2. Although now vacated, the substance of
`
`the PTAB’s prior rulings serves to support the Court’s analysis below that the client-side and
`
`
`
`7
`
`Patent Owner's Exhibit 2100
`Page 7 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 8 of 19
`
`server-side filtering of position information is not inventive. D. 274-7 (PTAB’s Final Written
`
`Decision on the ‘856 patent); D. 274-8 (PTAB’s Final Written Decision on the ‘501 patent); D.
`
`274-9 (PTAB’s Final Written Decision on the ‘998 patent).
`
`C.
`
`Relevant Procedural History
`
`On March 30, 2012, Worlds initiated this action. D. 1. The Court allowed Defendants’
`
`
`
`
`motion for summary judgment as to invalidity, D. 83, concluding that the Patents-In-Suit were not
`
`entitled to claim priority on November 13, 1995, the filing date of Worlds’ Provisional
`
`Application. D. 124. Worlds has pressed the remaining infringement claims as to infringement
`
`from the issuance of the certificates of correction by the PTO. D. 127 at 2. After a Markman
`
`hearing, the Court constructed disputed claim terms in an Order issued June 26, 2015. D. 153.
`
`The parties then exchanged updated infringement and invalidity contentions. D. 160, 164. The
`
`Court issued a Scheduling Order on September 16, 2015, adopting the pretrial schedule proposed
`
`by the parties. D. 181. On December 16, 2015, the parties jointly moved to stay this proceeding
`
`pending resolution of the IPR petitions before the PTAB. D. 198. The Court allowed that motion
`
`and issued a stay and ordered periodic status updates. D. 201. Over the course of the next few
`
`years, while the IPR proceedings were ongoing, the parties filed periodic status reports and
`
`requests to extend the stay, which the Court allowed. See D. 201 to 235. At the request of Worlds
`
`seeking a status conference, D. 239, and after briefing from the parties regarding the status of the
`
`matter, the Court held a status conference on April 16, 2020 and then set a further schedule for this
`
`case, including a deadline by which Activision could file the now pending motion. D. 262, 264.
`
`On May 19, 2020, Activision filed this motion for summary judgment that the remaining patent
`
`claims are invalid under 35 U.S.C § 101. D. 272. The Court heard arguments and took the matter
`
`under advisement. D. 286.
`
`
`
`8
`
`Patent Owner's Exhibit 2100
`Page 8 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 9 of 19
`
`III.
`
`
`
`Standard of Review
`
`A court will grant a moving party’s motion for summary judgment when there is no genuine
`
`dispute of material fact and the moving party is entitled to judgment as a matter of law. Fed. R.
`
`Civ. P. 56(a). A dispute is genuine if “the evidence about the fact is such that a reasonable jury
`
`could resolve the point in favor of the nonmoving party,” Vélez–Rivera v. Agosto–Alicea, 437
`
`F.3d 145, 150 (1st Cir. 2006) (quoting United States v. One Parcel of Real Prop., 960 F.2d 200,
`
`204 (1st Cir. 1992)) (internal quotation marks omitted), and a fact is material if it is “one that might
`
`affect the outcome of the suit under the governing law.” Id. (quoting Morris v. Gov’t Dev. Bank
`
`of P.R., 27 F.3d 746, 748 (1st Cir. 1994)) (internal quotation marks omitted). In resolving a motion
`
`for summary judgment, the Court scrutinizes the record in the light most favorable to the summary
`
`judgment opponent and draws all reasonable inferences to that party’s advantage. Alliance of
`
`Auto. Mfrs. v. Gwadosky, 430 F.3d 30, 34 (1st Cir. 2005).
`
`
`
`An issued patent is presumed valid. 35 U.S.C. § 282. This “statutory presumption of
`
`validity” applies when a party challenges a patent under 35 U.S.C. § 101. CLS Bank Intern. V.
`
`Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir. 2013). “[T]he burden is on the party
`
`challenging the validity of a patent to show that it is invalid by clear and convincing evidence.”
`
`Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002); see Budde
`
`v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001). Consequently, “a moving party
`
`seeking to invalidate a patent at summary judgment must submit such clear and convincing
`
`evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly Co. v. Barr Labs.,
`
`Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). When facts associated with a patent invalidity are not in
`
`dispute, the court determines “whether summary judgment of invalidity is correct by applying the
`
`law to the undisputed facts.” Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1257 (Fed. Cir.
`
`
`
`9
`
`Patent Owner's Exhibit 2100
`Page 9 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 10 of 19
`
`2012) (citing Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1366 (Fed. Cir. 2011)). For the
`
`reasons stated below, the Court concludes, on this undisputed record, that the remaining patent
`
`claims are invalid as a matter of law under §101.
`
`IV. Discussion
`
`
`A.
`
`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,
`
`machine, manufacture, or composition of matter, or any new and useful improvement thereof, may
`
`obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
`
`The claims asserted here as to the Patents-In-Suit describe a “process,” defined as a “process, art
`
`or method, and includ[ing] a new use of a known process, machine, manufacture, composition of
`
`matter, or material.” Id. § 100(b). Activision challenges that this process is patentable under §
`
`101.
`
`Under § 101, certain categories are not eligible for patent protection. Diamond v.
`
`Chakrabarty, 447 U.S. 303, 308 (1980). “Phenomena of nature, though just discovered, mental
`
`processes, and abstract intellectual concepts are not patentable, as they are the basic tools of
`
`scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Although “too
`
`broad an interpretation of this exclusionary principle could eviscerate patent law,” since “all
`
`inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural
`
`phenomena, or abstract ideas,” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
`
`71 (2012), “monopolization of those tools [of scientific and technological work] through the grant
`
`of a patent might tend to impede innovation more than it would tend to promote it.” Id.
`
`
`
`10
`
`Patent Owner's Exhibit 2100
`Page 10 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 11 of 19
`
`Mayo is instructive in this regard. In that case, the Supreme Court addressed the patent
`
`eligibility of claims covering processes that help doctors determine the appropriate dosage of
`
`thiopurine drugs for patients with autoimmune diseases. Mayo, 566 U.S. at 74-75. The claims
`
`described the relationships between the quantity of certain thiopurine metabolites in the blood and
`
`the likelihood that a drug would be ineffective or produce unwanted side effects. Id. at 74. More
`
`specifically, the patent claimed a process of administering a drug containing a metabolite to a
`
`subject and determining the subject's level of that metabolite, where a certain reading of the
`
`metabolite would indicate the need to change the dose of the drug. Id. at 75.
`
`The Supreme Court concluded that the patent was invalid under § 101 because the patent
`
`effectively claimed a law of nature, “namely, relationships between concentrations of certain
`
`metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective
`
`or cause harm.” Id. at 75. The Supreme Court reviewed each element in the patent beyond the
`
`recitation of this natural chemical relationship and then all the elements together to determine
`
`whether the claims added enough to qualify as a patent-eligible process “applying” a natural law.
`
`The “administering” step simply referred to a pre-existing audience of doctors treating patients
`
`with certain diseases. Id. at 77. The “wherein” clauses informed the doctor of the relevant natural
`
`laws: the relationships between the metabolite concentration in the blood and the necessary drug
`
`dosage adjustment. Id. The “determining” step instructed the doctor to measure the level of the
`
`relevant metabolite through any process of the doctor's choosing. Id. Finally, the steps together
`
`amounted to “nothing significantly more than an instruction to doctors to apply the applicable laws
`
`when treating their patients.” Id. at 78. Mayo ruled each of these elements insufficient to transform
`
`the underlying natural law into something patentable: “the claims inform a relevant audience about
`
`certain laws of nature; any additional steps consist of well-understood, routine, conventional
`
`
`
`11
`
`Patent Owner's Exhibit 2100
`Page 11 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 12 of 19
`
`activity already engaged in by the scientific community; and those steps, when viewed as a whole,
`
`add nothing significant beyond the sum of their parts taken separately.” Id. at 80.
`
`Even when a process involves a computer-generated process, it still may not be patent-
`
`eligible under § 101. In Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014), the Supreme Court
`
`ruled that a computerized scheme for mitigating settlement risk was not patent eligible under §
`
`101. As Alice framed the analysis in Mayo, a patent that claims a law of nature, natural
`
`phenomenon or an abstract idea is not patent eligible unless it has an element or combination of
`
`elements that provide an “inventive concept” beyond that law, phenomenon or abstract idea. Id.
`
`at 216. If in the first step, the patent claims a law of nature, natural phenomenon or an abstract
`
`idea, in the second step, a court proceeds to the “search for an ‘inventive concept’—i.e., an element
`
`or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself.’” Id. at 217-18 (quoting Mayo,
`
`566 U.S. at 74–77). In Alice, the Supreme Court applied this two-step analysis to a patent claiming
`
`a method of using a third party to mitigate settlement risk. Id. at 213–214. In doing so, the court
`
`concluded that the claims were directed to the abstract idea of intermediated settlement and
`
`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
`
`the “claims at issue amount to nothing significantly more than an instruction to apply the abstract
`
`idea of intermediated settlement using some unspecified, generic computer,” the Supreme Court
`
`held the patent invalid for want of an inventive concept. Id. at 225. Like Mayo, the claim elements
`
`were well-understood, routine and conventional activities known in the industry. Id. “[E]ach step
`
`does no more than require a generic computer to perform generic computer functions.” Id. The
`
`
`
`12
`
`Patent Owner's Exhibit 2100
`Page 12 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 13 of 19
`
`claims do “nothing significantly more” than “instruct to apply the abstract idea of intermediated
`
`settlement using some unspecified, generic computer.” Id. at 226.
`
`Also as in Mayo, Alice distinguished the patent held to be patent eligible in Diamond v.
`
`Diehr, 450 U.S. at 175 (1981). The patent in Diehr claimed a method for molding raw rubber into
`
`cured products using a mathematical formula. Alice, 573 U.S. at 223 (citing Diehr, 450 U.S. at
`
`177-78). The rubber-molding method in Diehr was patentable: because it employed a “well-
`
`known” mathematical equation, but it used that equation in a process designed to solve a
`
`technological problem in “conventional industry practice.” Id. (quoting Diehr, 450 U.S. at 177-
`
`178). The invention in Diehr used a “thermocouple” to record constant temperature measurements
`
`inside the rubber mold—something “the industry ha[d] not been able to obtain.” Id. at 178. The
`
`temperature measurements were then fed into a computer, which repeatedly recalculated the
`
`remaining cure time by using the mathematical equation. Id. at 178–79. These additional steps,
`
`“transformed the process into an inventive application of the formula.” Alice, 573 U.S. at 223
`
`(quoting Mayo, 566 U.S. at 76).
`
`The parties do not dispute that the claims that Activision focuses upon in its motions, claim
`
`1 of ‘856 patent, claim 4 of the ‘690 patent, claim 1 of the ‘501 patent, and claim 18 of the ‘998
`
`patent are representative claims of those that remain. D. 281 at 7 n.3; see D. 276 at 8. Since
`
`Worlds in its opposition focuses on claim 4 of the ‘690 patent, D. 276 at 8, the Court does so here.
`
`Claim 4 of the ‘690 patent, D. 274-01, provides as follows:
`
`
`
`13
`
`Patent Owner's Exhibit 2100
`Page 13 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 14 of 19
`
`
`
`
`
`2. Step One: Claims are Directed to an Abstract Idea
`
`
`
`
`
`As noted above, the first step in the § 101 analysis asks, “whether the claims at issue are
`
`directed to one of [the] patent-ineligible concepts,” namely laws of nature, natural phenomena, or
`
`abstract ideas. Alice, 573 U.S. 208, 216. The parties dispute whether World’s patents are directed
`
`to patent-ineligible concepts, namely the abstract idea of “filtering” (here of “position
`
`information”) which amounts to “crowd control.” D. 276 at 6; D. 281 at 2 n.2. Worlds contends
`
`that their claims are “directed to a novel client-server computer network architecture for 3-D virtual
`
`worlds.” Id. This description alone does not convert the patents into patent-eligible inventions.
`
`This Court’s Markman Order acknowledged that the claims, including the representative ‘690
`
`patent claim, are designed to accomplish crowd control through filtering (i.e., the “determining”
`
`and “receiving” steps), D. 153 at 8-10, See. e.g., D. 274-1 at 5, 13. Worlds maintained its position
`
`in this case, D. 281 at 5 (citing Worlds in D. 68 at 4) and in the IPR proceedings that its patents
`
`were directed at a method of “crowd control” and that these claims are the filtering function to do
`
`so. D. 273 at 15-16 (citing Worlds’ statements and filings before PTAB).
`
`Such filtering is, as Activision asserts, “a fundamental and well-known concept for
`
`organizing human activity,” and is patent ineligible. D. 273 at 16; see Bascom Global Internet
`
`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (agreeing, under step
`
`one of the Mayo/Alice analysis that “filtering content is an abstract idea because it is a
`
`
`
`14
`
`Patent Owner's Exhibit 2100
`Page 14 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 15 of 19
`
`longstanding, well-known method of organizing human behavior, similar to concepts previously
`
`found to be abstract”). That is, “the claims do nothing more than recite a general client-server
`
`computer architecture to perform routine functions of filtering information to address the generic
`
`problem of crowd control.” D. 281 at 2.
`
`Such conclusion is consistent with the first-step analysis in Mayo and Alice and the rulings
`
`in other patent cases involving filtering information claims. These claims, like those in Mayo,
`
`involve a natural phenomenon, that is achieving crowd control thru the filtering of information.
`
`As the representative claim, the receiving step of claim 4 of the ‘690 patent is about receiving
`
`position information and the determining step tells the relevant audience to determine the
`
`maximum number by whatever method and the comparing is to compare the actual number to the
`
`determined maximum number to determine which of the other users’ avatars are displayed. The
`
`steps are open-ended and instruct the audience to “engage in well-understood, routine,
`
`conventional activity.” Mayo, 566 U.S. at 79. That is, “to consider the three steps as an ordered
`
`combination adds nothing to the laws of nature that is not already present when the steps are
`
`considered separately.” Id. This is true whether focusing on the “maximum number” claims as in
`
`the ‘690 patent and ‘558 patent, or the “fewer than all” claim in the ‘856 patent or the “condition”
`
`steps in the ‘501 patent and the ‘998 patent.
`
`The rulings in other cases support this conclusion as well. For one example, in Fuzzysharp
`
`Techs. Inc. v. Intel Corp., No. 12-cv-4413, 2013 WL 5955668, at *13 (N.D. Cal. Nov. 6, 2013),
`
`aff’d, 595 F. Appx 996 (Fed. Cir. 2015), the court addressed claims that stated a method “for
`
`reducing the visibility related computation calculations in a certain field of use (such as ‘3-D
`
`computer graphics’) followed by method steps to perform the reduction.” Id. at *11. The court
`
`there held that the claims were directed to an abstract idea as the patent purported to cover all
`
`
`
`15
`
`Patent Owner's Exhibit 2100
`Page 15 of 19
`
`

`

`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 16 of 19
`
`applications of such filtering in the field of 3D computer graphics. Id. at *11. For another example,
`
`in Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777, 2015 WL 1941331,
`
`at *8 (S.D.N.Y. Apr. 28, 2015), the court considered a patent for a method for filtering a packet of
`
`information based upon the contents of two or more such packets. Id. at *1. The court in that case
`
`concluded that the asserted claims were patent ineligible at step 1 of the Mayo/Alice analysis for
`
`three reasons. First, the claim amounted to a “mental process” for filtering a packet of information
`
`and does not provide anything “concrete” to make it patent eligible. Id. Second, the claim was
`
`broad enough to raise “concerns of preemption.” Id. Since it is not limited to a particular
`
`application, but “covers all network filtering by an