Case 6:20-cv-00872-ADA Document 1 Filed 09/25/20 Page 1 of 30
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
`
`Civil Action No. 6:20-cv-872
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`
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`DEMAND FOR JURY TRIAL
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`
`
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`WORLDS INC.,
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`Plaintiff,
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`
`
`
`
`
`
`v.
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`MICROSOFT CORPORATION;
`
`
`
`
`
`Defendant.
`
`
`PLAINTIFF WORLDS INC.’S ORIGINAL COMPLAINT FOR PATENT
`INFRINGEMENT AGAINST MICROSOFT CORPORATION
`Plaintiff Worlds Inc. (“Worlds”), by and through its attorneys, hereby alleges this
`Complaint against Defendant Microsoft Corporation (“Microsoft”) for patent infringement.
`PARTIES
`Plaintiff Worlds is a corporation organized and existing under the laws of the
`1.
`State of Delaware and having a principal place of business at 11 Royal Road, Brookline,
`Massachusetts.
` Defendant Microsoft is a Washington state corporation with a headquarters
`2.
`located at One Microsoft Way, Redmond, Washington 98052. Microsoft’s Registered Agent for
`service of process in Corporate Service Company, 211 East 7th Street, Suite 620, Austin, Texas
`78701.
`
`Worlds is the sole and exclusive owner of U.S. Patent No. 8,082,501 (“the ‘501
`3.
`Patent”), entitled “System and Method for Enabling Users to Interact in a Virtual Space.” A
`true and correct copy of the ‘501 Patent is attached as Exhibit A.
`The ’501 Patent generally discloses and claims, inter alia, methods used for
`4.
`improving network communications and managing client processing burdens in a multi-
`client/server architecture used in three-dimensional, computer-generated, graphical, multi-user,
`interactive virtual world systems such as those found in multiplayer gaming. More specifically,
`
`PLAINTIFF’S COMPLAINT
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`1
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`the ’501 Patent is directed to methods used in systems that permits a plurality of users to interact
`in a three-dimensional, computer-generated, graphical virtual world, where each user executes a
`“client process” to view the virtual world from the perspective of that user. The client process
`can be used to customize the display of the virtual world to the user, and that display may
`include avatars representing other users who are “near” the user within the virtual world. So that
`the virtual world can be updated to reflect the motion or rotation of various users’ avatars, avatar
`position information is transmitted from each user’s client process to a centralized “server
`process,” which in turn transmits position updates back to the client processes. The client
`process updates its respective user’s display of the virtual world.
`
`
`Defendant Microsoft and entities and persons whose actions are attributable to
`5.
`Microsoft have made, used, sold, offered for sale, and/or imported in the United States, including
`in this judicial district, products and services that directly infringe at least method claims 1, 2, 5,
`and 10 of the ’501 Patent (“the Asserted Claims”), either literally or under the doctrine of
`equivalents. These infringing activities are associated with, but are not limited to, the Minecraft
`Java Edition Product and associated software, the official Minecraft Realms subscription-based
`servers and their associated server software, and the official Minecraft server software used for
`establishing a private Minecraft server, (collectively, “the Accused Products and Services”). See
`Ex. K (https://web.archive.org/web/20141003153025/https://minecraft.net/); see also Ex. L
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`(https://web.archive.org/web/20151105105527if_/https://minecraft.net/realms), Ex. M
`(https://minecraft.gamepedia.com/Java_Edition_1.7.9).
`In September of 2014, Microsoft announced it was acquiring Mojang, the
`6.
`developer of Minecraft, for $2.5 Billion. See Ex. N
`(https://news.microsoft.com/2014/09/15/minecraft-to-join-microsoft/). The deal was finalized in
`November of 2014. See Ex. O (https://www.polygon.com/2014/11/6/7167349/microsoft-owns-
`minecraft-mojang-acquisition-closes).
`In order for users to enjoy the benefits of interacting in the virtual world of
`7.
`Minecraft, Microsoft sold its Minecraft Java Edition Product to users pursuant to a number of
`aggrements including, but not limited to, the Mojang website Terms and Conditions, Ex. P
`(https://web.archive.org/web/20151105175934/https://account.mojang.com/terms), which apply
`generally to the downloading and use of all Minecraft games, as well as the specific Minecraft
`End User’s License Agreement in effect during the period of infringement, including in 2014
`(“2014 Minecraft EULA”), Ex. Q
`(https://web.archive.org/web/20141230051357/https://account.mojang.com/documents/minecraft
`_eula).
`
`For a user to download and enjoy the benefit of playing any Minecraft game, the
`8.
`official Mojang website’s Terms and Conditions note that “[t]hese terms and conditions are a
`legal agreement between you and us (Mojang AB)” and “incorporate the terms of use for the
`mojang.com website….” See Ex. P
`(https://web.archive.org/web/20151105175934/https://account.mojang.com/terms) at
`Introduction. Mojang’s Terms and Conditions expressly note that “[i]f you buy, download, use
`or play any of our games, you will also have to stick to the end user license agreement of that
`game.” Id. Further, the Mojang “Account Terms,” expressly “cover the ways our websites
`mojang.com and minecraft.net (our “Website”) will be provided to you and may be used by
`you.” Id. As the Mojang Account Terms specifiy, “[y]ou are free to use our Website as long as
`you stick to these Account Terms. … Your permission to use this website is personal to you, so
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`you can’t give it to anyone else. Don’t forget that we still own the Website and the content on it,
`but we are giving you permission to use it. We want you to enjoy using our website, but if we
`want, we can take away your permission to use our Website at any time if necessary.” Id. In
`particular, the Mojang Account Terms also include “Restrictions and Obligations” that state
`“[y]ou aren’t allowed to hack, decompile, or change our website at all and you musn’t do so.
`This includes the code or any content or data. Basically, you should just leave it as it is.”
`According to the Mojang Account Terms, “[t]he purchase of a game through our Website
`provides you with a license to use the game that commences when the download of the game
`starts….” Id.
`The 2014 Minecraft EULA provides additional requirements that users must
`9.
`follow in order to enjoy the benefits of playing Mojang’s Minecraft game. Specifically, the
`Minecraft EULA states “[i]n order to protect Minecraft (‘our Game’) and the members of our
`community, we need these end user license terms to set out some rules for downloading and
`using our Game. We don’t like rules any more than you do, so we have tried to keep this as
`short as possible. If you break these rules we may stop you from using our Game. If we think it is
`necessary, we might even have to ask our lawyers to help out.” Ex. Q.
`(https://web.archive.org/web/20141230051357/https://account.mojang.com/documents/minecraft
`_eula). Further, the Minecraft EULA states “[i]f you buy, download, use or play our Game, you
`are agreeing to stick to the rules of these end user license agreement (‘EULA’) terms. If you
`don’t want to or can’t agree to these rules, then you must not buy, download, use or play our
`Game. This EULA incorporates the terms of use of the mojang.com website (‘Account Terms’),
`our brand and asset usage guidelines and our privacy policy. By agreeing to this EULA, you
`also agree to all parts of these three documents, so please read through them carefully.” Id. The
`EULA also states “[t]he permission we give you to use and play our Game can be revoked if you
`break the terms of this EULA.” Id.
`In order for users to enjoy the benefits of playing Minecraft in a “multiplayer
`10.
`mode,” where multiple independent users can interact in the same Minecraft virtual world, a
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`Minecraft server that is able to host the multiple users is also required. Microsoft’s subsidiary
`Mojang provides and has provided online Minecraft Realms subscription server services. Ex. L
`(https://web.archive.org/web/20151105105527if_/https://minecraft.net/realms).
`In order for a user to enjoy the benefits of using a Mojang Realms service
`11.
`subscription for hosting a multiplayer Minecraft game, the user had to agree to abide by the
`Minecraft Realms Terms and Conditions. Ex. R
`(https://web.archive.org/web/20140915142357/https://minecraft.net/realms/terms). According to
`these Terms and Conditions for use of Minecraft Realms, “[t]hese Terms set out some rules for
`using the Minecraft Realms service [‘Minecraft Realms’]. We don’t like rules any more than
`you do, so we have tried to keep this as short as possible. If you break these rules we may stop
`you from using Minecraft Realms. If you use Minecraft Realms, you are agreeing to stick to the
`rules of these Terms. If you don’t want to or can’t agree to these Rules, then please don’t use
`Minecraft Realms. These Terms incorporate our Privacy Policy and the Mojang Account Terms
`and the Minecraft EULA.” According to the Minecraft Realms Terms and Conditions,
`“Minecraft Realms is a service designed to easily let people play Minecraft with other people on
`a dedicated server subject to these Terms. A ‘Minecraft Realm’ is therefore a single Minecraft
`world, server or instance that is hosted by [or for] us.” Id.
`Alternatively, users could establish and maintain partnered Minecraft servers by
`12.
`purchasing/licensing official Minecraft server software. See Ex. M
`(https://minecraft.gamepedia.com/Java_Edition_1.7.9). For users who opted to download the
`Minecraft server software to create a partnered Minecraft server, that Minecraft software was
`provided subject to various agreements including, but not limited to, the same Mojang Account
`Terms and Minecraft End User License Agreement discussed previously in paragraph 6. Ex. S
`(https://web.archive.org/web/20151105175934/https://account.mojang.com/terms#website ); Ex.
`Q
`(https://web.archive.org/web/20141230051357/https://account.mojang.com/documents/minecraft
`_eula). As set forth previously, in order for a user to retain the right to use and benefit from the
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`Minecraft products and services, the user must abide by these terms, conditions, and agreements.
`Specifically, the Terms and Conditions state, “[w]ith hosting servers we want to enable the
`community to make money by creating, hosting and maintaining servers for Minecraft, so you
`may do so subject to these Guidelines.” Id. One of those requirements is “you only give access
`to your server to users who have a genuine paid for version of Minecraft.” Id.
`13. Microsoft benefited from users who used their Microsoft Minecraft accounts and
`played Minecraft in a multiplayer mode, which provides a server/client architecture with
`filtering/crowd control features for multiplayer use, using either partnered servers with licensed
`Minecraft server software, or through the Minecraft Realms service, and a licensed version of
`Microsoft’s Minecraft Product. The manner and timing of the activities of the users was
`controlled by Microsoft by virtute of the Microsoft accounts, Microsoft software, and Microsoft
`licenses and agreements. Therefore, the asserted claims of the ‘501 Patent were directly
`infringed by Microsoft because all of the steps of the asserted method claims were attributable to
`Microsoft through the activities of Minecraft’s users.
`JURISDICTION AND VENUE
`This is an action for patent infringement, arising under the patent laws of the
`14.
`United States, 35 U.S.C. §§ 1, et seq. including, but not limited to, §§ 271, 281, 284, and 285.
`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§
`15.
`1331 and 1338(a).
`Defendant Microsoft is subject to this Court’s personal jurisdiction under the
`16.
`Texas Long Arm Statute and federal due process requirements because it has committed acts
`within this judicial District giving rise to this action, is registered to do business within the
`District, and has maintained established places of business having contacts within the state of
`Texas and within this judicial district including: (1) corporate sales offices (located at 10900
`Stonelake Boulevard, Suite 225, Austin, TX 78759 and Concord Park II, 401 East Sonterra
`Boulevard, Suite 300, San Antonio, TX 78258); (2) retail stores (located at 3309 Esperanza
`Crossing, Suite 104, Austin, TX, 78758 and 7400 San Pedro Avenue, San Antonio, TX 78216);
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`and (3) data centers that host, among other things, Microsoft’s Azure cloud services (located at
`5150 Rogers Road, San Antonio, TX 78251, 5200 Rogers Road, San Antonio, TX 78251, and
`15388 Lambda Drive, San Antonio, TX 78245). See Ex. T (https://www.microsoft.com/en-
`us/about/officelocator?Location=78759); Ex. U
`(https://comptroller.texas.gov/taxes/data-
`centers/data-center-lists.php). Through these physical, regular, established places of business
`Microsoft regularly conducts and solicits business, engages in a persistent course of business,
`employs people, derives substantial revenue through the sale and licensing of goods and services
`including the sale and use of the Accused Products and Services, and otherwise avails itself of
`the privileges and benefits of doing business in the state of Texas and within this judicial district.
`Defendant Microsoft is subject to this Court’s specific personal jurisdiction under
`17.
`the Texas Long Arm Statute and under federal due process standards because it has substantial,
`continuous, and systematic contacts with this State and this judicial district such exercise of
`personal jurisdiction over Microsoft would not violate traditional notions of fair play and
`substantial justice, such that Microsoft should expect to be haled into this Court.
`Defendant Microsoft has also been deemed subject to personal jurisdiction in this
`18.
`Court in patent actions 6:19-CV-00399-ADA and 1:19-CV-00874-ADA.
`Venue is proper pursuant to 28 U.S.C. 1400(b) because Defendant Microsoft
`19.
`and/or its subsidaries, including through the physical, regular, and established places of business
`set forth previously, has committed acts of infringement within the state of Texas and this
`District, through the sale and use of its Accused Products and Services, and has derived
`substantial revenues from these infringing acts. Specifically, Defendant Microsoft has used and
`offered, and continues to use and offer to its customers, within the state and judicial district, its
`Minecraft Accused Products and Services which provide users with the specific benefit, ability,
`manner, and timing for interacting with each other and the environment within its immersive
`virtual reality environment pursuant to the requirements of the various Minecraft/Mojang Terms
`and Conditions, and End User License Agreements as set forth previously.
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`Defendant Microsoft also used and offered, and continues to use and offer to its
`20.
`customers within the state and judicial district official Minecraft Java servers and Minecraft Java
`Edition server software products that, pursuant to Microsoft’s legal requirements and terms of
`use, for hosting its Minecraft products and as a required and necessary tool for providing its
`users with the specific benefit, ability, manner, and timing to access the Minecraft virtual world
`and interact within its immersive virtual reality environment.
`Venue has also been determined as proper against Microsoft in this Court in
`21.
`patent actions 6:19-CV-00399-ADA and 1:19-CV-00874-ADA.
`For these reasons, personal jurisdiction exists and venue is proper in this District
`22.
`and Court.
`
`BACKGROUND – WORLDS, INC.
`23. Worlds, Inc., a publicly traded company having stock ticker symbol “WDDD,” is
`one of the earliest developers and an original innovator in the field of internet-based, multiplayer,
`3-D entertainment. See Exhibit B, Gina Smith, “Whole new Worlds on-line: S.F. Startup
`Making Waves with 3-D Virtual Reality World on the Internet”, San Francisco Examiner, May
`14, 1995; Exhibit C, Todd Copilevitz, “Here's a chat room worth talking about”, Dallas
`Morning News, June 11, 1995. As early as 1994, the company was engaged in the research and
`development of 3-D online worlds, the kind of technology that now powers massively
`multiplayer online role playing games (“MMORPGs”).
`24. Worlds, Inc. was a spin-off of closely held Knowledge Adventure, Inc. Worlds
`Inc. was formerly known as Knowledge Adventure Worlds. See Exhibit D, “Worlds Inc.
`Announces ‘Worlds Chat’”, Business Wire, April 25, 1995; Exhibit E, Jared Sandberg, “Talking
`Blowfish to Enliven the Internet”, The Wall Street Journal, April 3, 1995.
`25. Worlds, Inc. was at times known as Worlds.com, Inc.
`26. With ground-breaking product offerings in 1995, Worlds was one of the earliest
`adopters and developers of key technologies used in today’s virtual reality and immersive
`environments.
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`27. While the video gaming industry was in its infancy in 1994-1995, it is now a $100
`billion a year industry and includes companies having multi-billion-dollar annual revenues. See
`Exhibit F, Teodora Dobrilova, “How Much Is the Gaming Industry Worth,” techjury, April 4,
`2019 (available at https://techjury.net/stats-about/gaming-industry-worth/).
`BACKGROUND – WORLDS’ INNOVATION
`In 1995, four Worlds employees — Dave Leahy, Judith Challinger, B. Thomas
`28.
`Adler, and S.J. Ardron (together, the “named inventors”) — were faced with problems in the
`field of computer networks and discovered novel solutions that are the inventions disclosed in
`the ’501 Patent asserted in this lawsuit. The named inventors arrived at their inventions while
`developing Worlds’ virtual-worlds software platforms, Worlds Chat and AlphaWorld — both of
`which were first introduced in 1995, and enabled remote users to chat and interact over the
`Internet in graphically rich, three-dimensional virtual environments.
`29. Worlds unveiled its 3-D virtual space referred to as Worlds Chat in 1995 and
`distributed it to the public for free. Worlds Chat was a virtual worlds software application that
`allowed remote users to chat over the internet while occupying a visually rich three-dimensional
`virtual world. See Exs. B, C, D, E.
`30. Worlds Chat users are represented by three-dimensional avatars. Users can view
`the virtual world from the point of view of their avatar and freely move through the virtual
`world. See Ex. D.
`31. Worlds’ technology was a radical leap from menu-driven, icon-based interfaces.
`Worlds’ ground-breaking technology connected three-dimensional interactive environments even
`over regular phone lines in 1995, with minimum hardware requirements of a 9600 baud modem
`and a 486 PC. Id.
`On May 14, 1995, the San Francisco Examiner published an article entitled
`32.
`“Whole new Worlds on-line: S.F. Startup Making Waves with 3-D Virtual Reality World on the
`Internet.” Ex. B. In the article Gina Smith reported, “Worlds—a spin off of La Crescenta-based
`edutainment firm Knowledge Adventure—has created Worlds Chat. It is one of the first
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`examples of virtual reality on the Internet I’ve seen.” The article further states, “Worlds Chat is a
`virtually real, multi-user 3-D world that you can walk through and meet people in” and “Worlds
`Chat is different. This isn’t just text, it’s a graphical environment.” Id.
`33. Worlds’ work on virtual environments also drew the attention of Steven
`Spielberg. In its article, the San Francisco Examiner reported that, “Last week, movie director
`Steven Spielberg announced that his nonprofit Starbright Foundation is working with Worlds,
`Intel, UB Networks and Sprint to create a 3-D environment where hospitalized children can play
`and socialize with each other.” Id.
`Other newspaper articles written that year touted the achievements of Worlds
`34.
`Chat. For example, on June 11, 1995, the Dallas Morning News published an article titled
`“Here's a chat room worth talking about.” Ex. C. The reporter Todd Copilevitz stated, “Worlds
`Chat is the hottest innovation the Internet will see this year. Write it down, take it to the bank. It
`may well be the most important, too, not just for the innovation it marks but the potential it
`brings to cyberspace.” Id. The article further states, “Worlds Chat is a new service from Worlds
`Inc. of San Francisco. It uses direct Internet connections, the type offered by local service
`providers and CompuServe, to gather users from around the world.” Id.
`Coming out of Worlds’ innovation associated with Worlds Chat was the
`35.
`technology that provides the backbone for the patent at issue here. Shortly after the release of
`Worlds Chat, the named inventors initially set forth their inventions in a provisional patent
`application filed on November 13, 1995 (the “Provisional Application”). Exhibit G, U.S.
`Provisional Patent Application No. 60/020,296.
`BACKGROUND - WORLDS’ PATENT PORTFOLIO
`36. Worlds has been granted multiple U.S. patents, issuing from April 2001 to August
`2015, for various inventions including certain client-server load balancing technology for three-
`dimensional virtual worlds. These inventions allow multiple users to interact in the three-
`dimensional, computer-generated graphical space, where each user executes a client process to
`view the virtual world from the perspective of that user. To update the virtual world to reflect
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`the motion and/or rotation of the users’ avatars, position information is transmitted to a central
`server, which then provides position updates to client processes for displaying the updated virtual
`world from the point of view of their respective users. The client processes also use an
`environment database to determine which background objects to render, as well as to limit the
`movement of an associated user's avatar.
`37. Worlds Inc., at times operating under the name Worlds.com Inc., is the original
`and sole assignee of the ’501 Patent. Id.
`To date, Worlds’ patent infringement enforcement program has pursued claims
`38.
`against multi-billion-dollar video game developing companies.
`BACKGROUND - PRIOR LITIGATION AND ADMINISTRATIVE PROCEEDINGS
`On March 30, 2012, Worlds filed a patent infringement lawsuit against Activision
`39.
`Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc., (collectively,
`“Activision”) in the United States District Court for the District of Massachusetts for patent
`infringement. Worlds, Inc. v. Activision Blizzard, Inc., et al., Civil Action No. 1:12-CV-10576
`(D. Mass., March 30, 2012). The asserted patents in the lawsuit against Activision included the
`’501 Patent.
`On June 26, 2015, a claim construction order was issued in Worlds’ litigation
`40.
`with Activision. Exhibit H, Worlds, Inc. v. Activision Blizzard, Inc., et al., Dkt. No. 153.
`On September 4, 2015, Activision filed a Motion for Summary Judgment against
`41.
`Worlds, asserting that the Asserted Patent Claims are Invalid under 35 U.S.C. § 101. Worlds,
`Inc. v. Activision Blizzard, Inc., et al., Dkt. Nos. 174-177.
`In late May and early June 2015, Bungie, Inc. (a company having a contractual
`42.
`relationship with Activision) filed a number of petitions for inter partes review (“IPR”) with the
`Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”),
`challenging the validity of many of the claims in the Worlds patent portfolio, including claims of
`the ’501 Patent. The PTAB instituted the IPRs and reached final decisions on each. Three IPRs,
`including IPR2015-01319 directed to the ’501 Patent, were appealed by Worlds and were
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`vacated and remanded to the PTAB by the Federal Circuit. See Worlds Inc. v. Bungie, Inc., 903
`F.3d 1237 (Fed. Cir. 2018). On remand, the PTAB terminated IPR2015-01319 without reaching
`a final written decision on January 14, 2020. Bungie, Inc. did not appeal the termination of
`IPR2015-01319.
`The Massachusetts District Court litigation was stayed on February 11, 2016, and
`43.
`remained stayed pending the outcome of the three remanded IPRs until April 17, 2020. At that
`time, the district court lifted the stay, reopened fact discovery, and set a schedule for updated
`briefing on Defendants’ Motion under 35 U.S.C. § 101. After updated briefing was complete, a
`hearing on that Motion was held on July 22, 2020, but the Massachusetts District Court has not
`yet rendered its decision.
`OVERVIEW OF U.S. PATENT NO. 8,082,501
`The ‘501 Patent duly and legally issued on December 20, 2001 from U.S. Patent
`44.
`Application Serial No. 12/406,968, filed on March 19, 2009. This application is a continuation
`application of and claims priority to U.S. Patent Application Serial No. 12/353,218 filed January
`13, 2009, now U.S. Patent No. 7,945,856; which is a continuation of and claims priority to U.S.
`Patent Application Serial No. 11/591,878, filed November 2, 2006, now U.S. Patent No.
`7,493,558; which is a continuation of and claims priority to U.S. Patent Application Serial No.
`09/632,154, filed August 3, 2000, now U.S. Patent No. 7,181,690; which is a continuation of and
`claims priority to U.S. Patent Application Serial No. 08/747,420, filed November 12, 1996, now
`U.S. Patent No. 6,219,045; which claims priority to U.S. Provisional Patent Application Serial
`No. 60/020,296, filed November 13, 1995.
`The ’501 Patent is titled: “System and Method for Enabling Users to Interact in a
`45.
`Virtual Space.” Id. As described in the Background of the ’501 Patent, there are difficulties in a
`conventional “client-server system” for 3-D virtual reality “game playing, where the positions
`and actions of each user need to be communicated between all the players to inform each client
`of the state changes (position, actions, etc.) which occurred at the other clients.” Id. at 1:63-66
`(emphasis added).
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`Similar to the traditional client-server system, the prior “peer-to-peer architecture”
`46.
`required many messages to provide the state change updates, and because of the heavy
`processing loads and limited capabilities of a workstation in a 3-D environment, this requirement
`to process many messages “limits the number of clients which can be connected to the network.”
`Id. at 2:4-8.
`The ’501 Patent describes an improved system in which “the virtual world server
`47.
`must be much more discriminating as to what data is provided to each client[].” Id. at 3:51-53.
`To handle the remote avatar positions received by a client, the client includes “a
`48.
`way to filter out avatars” for display using, according to various embodiments, proximity, user
`ID, or a crowd control function (which is “needed in some cases to ensure that neither client 60
`nor user A get overwhelmed by the crowds of avatars likely to occur in a popular virtual
`world.”). Id. at 6:3-5; 5:37-41.
`Thus, the ’501 Patent discloses server-side crowd control, such that the server
`49.
`may notify the client of the positions of only certain relevant neighboring avatars. The client
`determines the avatars to be displayed based on, for example, the received avatar positions from
`the server, and application of these additional filtering and/or crowd control functions. The
`rendering engine 120 then generates the graphical display from the point of view (position and
`orientation) of the client’s avatar. Id. at 7:55-57.
`On November 4, 2011, the USPTO Examiner examining the application that led
`50.
`to the ’501 Patent issued a NOTICE OF ALLOWANCE AND FEE(S) DUE, allowing the claims
`in Patent Application No. 12/406,968. In the section titled “REASONS FOR ALLOWANCE,”
`the Examiner concluded:
`
`The following is an examiner’s statement of reasons for
`allowance: Applicant has claimed uniquely distinct features in
`the instant invention which are not found in the prior art either
`singularly or in combination. They are customizing, using a
`processor of a client device an avatar in response to input by a
`first user; receiving by the client device, position information
`associated with fewer than all the other user avatars in an
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`Case 6:20-cv-00872-ADA Document 1 Filed 09/25/20 Page 14 of 30
`
`interaction room of the virtual space, from a server process,
`wherein the client device does not receive position information
`of at least some avatars that fail to satisfy a participant condition
`imposed on avatars displayable on the client device display of
`the client device; determining by the client device, a displayable
`set of the other user avatars associated with the client device
`display; and displaying, on the client device display, the
`displayable set of the other user avatars associated with the
`client device display. These features are not found or suggested
`in the prior art.
`
`See Exhibit I, NOTICE OF ALLOWANCE AND FEE(S) DUE dated November 4, 2011.
`ASSERTED CLAIMS OF THE ’501 PATENT
`The asserted claims of the ‘501 Patent include at least claims 1, 2, 5, and 10,
`51.
`presented below.
`Claim 1 of the ‘501 Patent reads:
`52.
`
`1. A method for enabling a first user to interact with other users in a virtual
`space, each user of the first user and the other users being associated with a
`three dimensional avatar representing each said user in the virtual space, the
`method comprising the steps of:
`
`
`customizing, using a processor of a client device, an avatar in response to
`input by a first user;
`
`receiving, by the client device, position information associated with fewer
`than all of the other user avatars in an interaction room of the virtual
`space, from a server process, wherein the client device does not receive
`position information of at least some avatars that fail to satisfy a
`participant condition imposed on avatars displayable on a client device
`display of the client device;
`
`determining, by the client device, a displayable set of the other user
`avatars associated with the client device display; and
`
`displaying, on the client device display, the displayable set of other user
`avatars associated with the client device display.
`
`Claim 2 of the ‘501 Patent reads:
`
`2. The method according to claim 1, further comprising the step of:
`
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`
`53.
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`Case 6:20-cv-00872-ADA Document 1 Filed 09/25/20 Page 15 of 30
`
`
`monitoring an orientation of the first user avatar;
`
`wherein the step of determining comprises filtering the other user avatars
`based on the monitored orientation of the first user avatar.
`Claim 5 of the ‘501 Patent reads:
`
`5. The method according to claim 1, further comprising receiving by the
`client device orientation information associated with fewer than all of the
`other user avatars, wherein the client device does not receive orientation
`information of at least some avatars of the other user avatars in the virtual
`space.
`
`Claim 10 of the ‘501 Patent reads:
`
`10. The method according to claim 1, wherein the step of determining
`comprises filtering the other user avatars based on a limit of the other user
`avatars that may be displayed on the client device display, the limit being set
`at the client device.
`
`54.
`
`55.
`
`
`
`
`
`THE TECHNICAL PROBLEM SOLVED BY THE ’501 PATENT
`The ’501 Patent addresses a computer-centric problem unique to networked
`56.
`multiuser client-server systems: how to facilitate interaction among a large (and potentially
`unknown or variable) number of remote users in a three-dimensional world, given the limitations
`in network capacity and the different capabilities of client computers connected to the virtual
`world. Ex. A at 1:25–2:33.
`The ’501 Patent specification further discusses the problems in t