Worlds: Expect Favorable Findings From The Markman Hearing

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Summary

A Markman hearing in Worlds' patent infringement suit against Activision was held October 3rd.

The Judge's forthcoming findings will determine the interpretation of the patent claims and can indicate the likely outcome for the patent infringement case as a whole.

An analysis of the claim construction arguments from both sides indicates Worlds should expect favorable findings.

Worlds (OTCQB:WDDD) and Activision (NASDAQ:ATVI) are in the midst of a patent infringement battle. Defendant Activision publishes several video games in the highly successful Call of Duty and World of Warcraft franchises. Plaintiff Worlds asserts that Activision infringes 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").

A Markman hearing was held on October 3rd, 2014 (PR). At the Markman hearing, "claim construction" arguments were made about the meaning, intent, and "indefiniteness" of the language used in 11 disputed terms. The Court took this matter under advisement. The Judge's forthcoming findings can indicate the likely outcome in this case. We believe that the following analysis of the arguments favor Worlds and they should expect favorable findings.

Claim Construction

Claim construction is a question of law for the determination by the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996). The Court assigns claim terms the ordinary and customary meaning that a person of ordinary skill in the art in question would have assigned to the terms at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). "The person of ordinary skill in the art is deemed to read the claim term... in the context of the entire patent, including the specification." Id. at 1313.

The patent specification "is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In fact, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Id. at 1314. Because the purpose of the specification is to "teach and enable those of skill in the art to make and use the invention and to provide the best mode for doing so," Phillips at 1323, it is "entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Id. at 1317.

The patent's prosecution history "can [also] often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. Although courts generally do not accord extrinsic evidence (testimony, expert opinion, or other unwritten sources) the weight that they accord to intrinsic evidence (patent documentation and any prosecution history of the patent), the Court may consider extrinsic evidence "if the court deems it helpful in determining the true meaning of language used in the patent claims." Id. at 1318. Ultimately, "the construction that stays true to the claim language and most naturally aligns with the patent's description of the invention [in the specification] will be, in the end, the correct construction." Id. at 1316.

Indefiniteness

The Patent Act requires that every patent's specification must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112b. "Because the claims perform the fundamental function of delineating the scope of the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude," Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005), and the boundaries of the patentee's invention, Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1253 (Fed. Cir. 2008). The patentee has satisfied this requirement only when the claims "clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise." United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).

Patents are presumed valid. 35 U.S.C. § 282a. "By finding claims indefinite only if reasonable efforts at claim construction prove futile, [courts] accord respect to the statutory presumption of validity and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A party seeking a declaration of invalidity must prove same by clear and convincing evidence. Budde v. Harley-Davidson, Inc. (NYSE:HOG), 250 F.3d 1369, 1376 (Fed. Cir. 2001).

Disputed Terms

A. "determining, from the received positions, [a/the] set of the other users' avatars that are to be displayed"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

determining, from the received positions, [a/the] set of the other users' avatars that are to be displayed

No construction required.

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

Activision's position is that the number of avatars displayed is limited "to a set maximum." Activision argued that ambiguous statements made in the prosecution history trump this claim.

At oral argument, counsel for Worlds argued that Activision's construction improperly imports extraneous limitations. Worlds argued that if "a set maximum" limit were imposed, it wouldn't allow for position, orientation, proximity, and other data to be considered in determining which avatars to display, as disclosed in the '690 Patent specification:

  • "avatars will appear and disappear from A's view in a number of circumstances. For example, avatars enter and leave rooms and move in and out of visual range (as handled by crowd control rules described below)." Id. at 11:34-39.
  • "user A might have a way to filter out avatars on other variables in addition to proximity, such as user ID." Id. at 5:65-67.
  • "Client 60 uses the locations of walls and other objects to determine how A's avatar's position is constrained." Id. at 7:4-6.
  • "When client 60 receives a TeleportCommand or AppearCommand for an avatar that is appearing, it must first determine if it currently has information for the specified object cached." Id. at 13:4-7.

Worlds also points to the broader context, referring to dependent claims wherein such limitations such as "a maximum number of the other users' avatars" are not present in the independent claim.

Ultimately, when construing a claim, the Court must avoid inserting "a limitation into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim." SanDisk Corp. (SNDK) v. Memorex Products, Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005). Additionally, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). The court will not use ambiguous statements in the prosecution history "to limit a claim term's ordinary meaning." SanDisk, 1287.

Accordingly, the Court should agree with Worlds that this term requires no construction.

B. "position of less than all of the other users' avatars"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

position of less than all of the other users' avatars

No construction required.

positions for up to a set maximum number of the other users' avatars, which is less than the total number of other users' avatars

Activision argued that the "purpose" of the invention is to limit the number of avatars displayed "to a set maximum number."

Worlds' position is that the '690 Patent specification focuses on proximity, closeness, orientation, and user position, not "maximum number":

  • "In any case, remote avatar position table 112 contains an entry for each neighboring avatar. That entry indicates where the remote avatar is (its position), its orientation, a pointer to an avatar image, and possible other data about the avatar such as its user's ID and name." Id. at 6:1-5.
  • "server 61 determines which N avatars are closest to A's avatar, based on which room of the world A's avatar is in and the coordinates of the avatars." Id. at 5:45-48.
  • "In rendering a view, client 60 requests the locations, orientations and avatar image pointers of neighboring remote avatars from server 61 and the server's responses are stored in remote avatar position table 112." Id. at 7:42-45.
  • "User object 64 also maintains a list of the N nearest neighboring remote avatars (i.e., avatars other than the avatar for the user object's client/user) in the room." Id. at 14:41-46.

Activision's proposed construction makes no sense in the context of the claims, because once again they are attempting to import extraneous limitations not found. Claims may not be limited to support a perceived "purpose" of the invention. The "Court's task in construing patent claim is not to limit claim language to exclude particular devices because they do not serve a perceived purpose of the invention; rather, the district court's function is to interpret claims according to their plain language unless the patentee has chosen to be his own lexicographer in the specification or has clearly disclaimed coverage during prosecution." E-Pass Technologies, Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir. 2003).

Accordingly, the Court should agree with Worlds that this term requires no construction.

C. "programmed to limit the number of remote user avatars shown on the graphic display"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

programmed to limit the number of remote user avatars shown on the graphic display

No construction required.

programmed to restrict the number of remote user avatars shown on the graphic display to a maximum number of avatars allowed

Worlds' position is that the '998 Patent claims teach specific methods for limiting remote user avatars:

  • "11. The system according to claim 2, wherein the first processor is further programmed to limit the number of remote user avatars shown on the graphic display based on the proximity of the remote user avatars relative to the local user avatar."
  • "12. The system according to claim 2, wherein the first processor is further programmed to limit the number of remote user avatars shown on the graphic display based on the orientation of the remote user avatars relative to the local user avatar."
  • "13. The system according to claim 2, wherein the first processor is further programmed to limit the number of remote user avatars shown on the graphic display based on computing resources available to the local user graphic display."
  • "14. The system according to claim 2, wherein the first processor is further programmed to limit the number of remote user avatars shown on the graphic display based on a selection made by the local user."

The '998 Patent specification clearly states that "the above description is illustrative and not restrictive. Many variations of the invention will become apparent to those of skill in the art upon review of this disclosure. The scope of the invention should, therefore, be determined not with reference to the above description, but instead should be determined with reference to the appended claims along with their full scope of equivalents." Id. at 15:64-16:3.

Activision argued that the number of avatars shown is restricted to a "maximum number." Activision's construction would materially alter the meaning of the term. "The role of a district court in construing claims is not to redefine claim recitations or read limitations into the claims to obviate factual questions of infringement and validity but rather to give meaning to the limitations actually contained in the claims." Phillips, 1314.

Accordingly, the Court should decline Activision's proposed construction and agree with Worlds' unambiguous and easily applied unchanged term language.

D. "client process" and "server process"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

client process

a program executed, stored, or accessible on a user's computer to provide access to a server

a program being executed by a user's computer that receives service from a server

server process

a program executed, stored, or accessible by one or more computers that provide one or more services to users of computers across a network

a program being executed by a computer that provides services to a client

The proposed constructions indicate the parties' agreement that the claim's reference to a "client process" refers to "a program... on a user's computer" and that a "server process" refers to "a program... that provides services." The parties disagree as to whether the "program" must be exclusively in a state of "being executed" as opposed to "executed, stored, or accessible." Additionally, the parties disagree as to whether a "server process" is limited to "a [single] computer" servicing a single client or "one or more computers that provide one or more services to users of computers across a network." The Court must construe the claim in light of the specification. Phillips, 415 F.3d at 1315.

The '690 Patent specification states "where a process is described with reference to a client or server, that process could be a program executed by a CPU in that client or server system and the program could be stored... accessible by a client or server." Id. at 4:25-35.

The Court should therefore find that Worlds' proposed construction of "a program executed, stored, or accessible" is more consistent with the specification. Nothing requires the "program" to be exclusively in a state of "being executed."

Activision's proposed construction of a "server process" is inconsistent with the '690 patent specification which states: "The architecture is described with reference to a system where each user is associated with their own client computer system separate from the network and servers, however a person of ordinary skill in the art of network configuration would understand, after reading this description, how to vary the architecture to fit other physical arrangements, such as multiple users per computer system or a system using more complex network routing structures than those shown here." Id. at 4:16-24.

Worlds argues that their proposed construction comports with the specification and ordinary meaning of "server." In oral argument, Worlds referred to dictionary definitions for the term "server": "a computer system, such as one or more computers and/or devices, that provides services to other computer systems over a network" and "a device or computer system that is dedicated to providing specific facilities to other device attached to the network." The IEEE Standard Dictionary of Electrical And Electronics Terms. Worlds' construction is consistent with the plain and ordinary meaning of "server."

Accordingly, the Court should construe "server process" as Worlds proposes since nothing limits the "server process" to "a [single] computer."

E. "condition" and "participant condition"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

condition

No construction needed.

In the alternative, "an expression in a software program that affects the status or display of an avatar"

Indefinite under 35 U.S.C. § 112, ¶ 2. Alternatively, "a condition set by the client"

participant condition

No construction needed.

In the alternative, "a condition imposed on an avatar, its controlling user, or its associated client device, that affects the status or display of an avatar"

Indefinite under 35 U.S.C. § 112, ¶ 2.

Activision argued that claims 1, 11, 12, 13, 14, and 17 of the '501 patent are invalid because the terms "condition" and "participant condition" are indefinite, even as Activision uses the term "condition" in its proposed construction.

Worlds argued that the '501 patent's use of "condition" is not indefinite, as a plain and ordinary definition is "an expression in a program or procedure that can be evaluated as either true or false." Computer Science and Communications Dictionary.

When construing terms, "we have not insisted that claims be plain on their face... If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Exxon at 1375.

It is noteworthy, that even the Examiner used "participant condition" in his proposed amendment: "in an interaction room of the virtual space... that fail to satisfy a participant condition imposed on avatars displayable on a client display of the client device." Application/Control Number: 12/406,968.

The '501 patent adequately discloses filtering by "participant condition" in the claim language: "1. …the client device does not receive position information of at least some avatars that fail to satisfy a participant condition imposed on avatars displayable on a client device display of the client device." Additionally, the '501 patent specification discloses: "user A might have a way to filter out avatars on other variables in addition to proximity, such as user ID." Id. 6:3-5.

The Court can only invalidate a claim "by finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity." Exxon at 1375. Activision fails to meet its burden of proving invalidity by clear and convincing evidence. Despite Activision's protestations to the contrary, it is clear that the goal of the invention is to filter out "at least some avatars that fail to satisfy a participant condition."

Accordingly, for the foregoing reasons, the Court should adopt the construction of "condition" and "participant condition" as "an expression in a program or procedure that can be evaluated as either true or false" and find that neither "condition" nor "participant condition" is indefinite.

F. "avatar"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

avatar

graphical representation of a user in three-dimensional form

a graphical representation of a user

Worlds argued that their proposed construction follows the preferred embodiment - users in a three-dimensional form: "in a preferred embodiment a plurality of users interact in the three-dimensional, computer-generated graphical space where each user executes a client process to view a virtual world from the perspective of that user," '690 Patent Abstract. Accordingly, Worlds points to Claim 2 of the '998 Patent: "each user being associated with a three dimensional avatar" and Claim 1 of the '501 patent: "three dimensional avatar representing said each user in the virtual space."

Activision's construction would exclude the preferred embodiment and their construction contradicts the '690 Patent specification of: "avatar images are three-dimensional."

Accordingly, the Court should adopt the construction of "avatar" as proposed by Worlds.

G. "third user perspective"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

third user perspective

view from the perspective of the user

Indefinite under 35 U.S.C. § 112, ¶ 2.

Worlds argued that their proposed construction follows the preferred embodiment - "view a virtual world from the perspective of that user," '690 Patent Summary of the Invention. Accordingly, Worlds points to FIG. 1 of '690 Patent:Wherein, the specification reads: "FIG. 1 is an illustration of a client screen display 10 seen by one user in the chat system. Each user interacts with a client machine (not shown) which produces a display similar to screen display 10 but from the perspective of the avatar for that client/user. Screen display 10 is the view from the perspective of a third user."

While, Activision argues that "third user perspective" is indefinite, FIG. 1 and the associated '690 Patent Specification description of FIG. 1 allow one to discern that "a view from the perspective of the user" is the proper construction.

Accordingly, the Court should adopt the construction of "third user perspective" as proposed by Worlds.

H. "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"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

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

No construction needed.

In the alternative, "switch between a graphical representation in which all of a local user's field of view is displayed, and a graphical representation in which less than all of a local user's field of view is displayed"

Indefinite under 35 U.S.C. § 112, ¶ 2.

Activision argued that this term in Claim 19 of the '998 Patent is indefinite, yet in the same patent, Activision agrees that the strikingly similar Claim 18 terms: "change in three dimensions the perspective view of the rendering on the graphic display of the virtual world in response to user input" require no additional construction.

Worlds argues that this term requires no construction, and that it follows the claim language and specification - all of a user's perspective view: "rendering engine 120 renders a view of the virtual world from the viewpoint (position and orientation) of A's avatar" and that a person of ordinary skill would easily discern the claim term meaning.

Activision can't have it both ways. Either Claim 19 and 18 are both indefinite or they aren't. The Court should find that no construction is needed or Worlds' proposed construction is reasonable.

I. "synchronously disseminating"

Term

Worlds' Proposed Construction

Activision's Proposed Construction

synchronously disseminating

No construction needed.

In the alternative, "transmitting in a manner that is synchronized or coordinated"

Indefinite under 35 U.S.C. § 112, ¶ 2.

Worlds argued that their proposed construction follows the disclosed method for data transmission across multiple clients, servers, and users: "where a client-server system is used for real-time exchange of information, ...communication is much more difficult... where the positions and actions of each user need to be communicated between all the players to inform each client of the state changes." Specification of '998 Patent 1:54-67. Worlds refers to the IBM Dictionary of Computing definition of "synchronous": "(1) Pertaining to two or more processes that depend upon the occurrence of specific events such as common timing signals. (2) Occurring with a regular or predictable time relationship." Worlds also argued that their proposed construction follows the preferred embodiment for sending coordinated position information: "each client machine sends its current location, or changes in its current location, to the server and receives updated position information of the other clients," '998 at 3:39-44 and "Alternatively, the updates can be done asynchronously with server 61 sending periodic updates in response to a client request or automatically without request," '998 at 7:45-52.

A recent Supreme Court decision stated: "that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity while recognizing that absolute precision is unattainable," Nautilus, Inc. (NYSE:NLS) v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014).

The Court should find that the claims and specification reasonably inform those skilled in the art about the scope of the invention and should agree with Worlds' proposed construction.

Conclusion

The foregoing analysis suggests that the Court should view Worlds' proposed constructions favorably and not find any terms indefinite. After the Court's findings are released, it's likely that a trial date will be set. This should stimulate substantive settlement negotiations, giving Worlds an advantageous position.

Disclosure: The author is long WDDD.

The author wrote this article themselves, and it expresses their own opinions. The author is not receiving compensation for it. The author has no business relationship with any company whose stock is mentioned in this article.

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