Words sued Activision in 2012, asserting infringement of a number of patents relating to interaction of users in a virtual space through Activision’s sale of World of Warcraft and Call of Duty games. In 2014, Judge Casper granted Activision’s motion for summary judgment that the patents were not entitled to claim priority to an initial provisional application. Judge Casper determined that the first two of the utility applications in the family (from which the other asserted patents depend) failed to claim priority to the provisional application as required by the patent statutes. While there were references to the provisional elsewhere in the file histories of the two patents, these references did not fulfill the statutory requirements, and therefore the priority claims were ineffective.
Without the priority claim, Worlds’ patents would be anticipated by a pair of Worlds’ products that were offered for sale more than a year prior to the filing date of the first of the utility applications. To circumvent this problem, Worlds had sought and obtained certificates of correction to include the priority claim in the patents, and Worlds continued to assert infringement from the time of issuance of the certificates of correction.
While the litigation proceeded, a third party filed Inter Partes Review requests on the patents, and most 9but not all) of the asserted claims were deemed invalid by the PTAB. The Federal Circuit vacated the ruling on procedural grounds, namely that Activision should have been named the real party in interest, which would have resulted in the petitions being denied as time-barred. The PTAB rescinded the institution of the IPR’s in 2020.
Judge Capser ultimately determined that the patents were invalid under 35 U.S.C. 101 as claiming unpatenable subject matter. She determined, based on the Supreme Court’s 2014 Alice decision, that Worlds claimed conventional known filtering or crowd control methods implemented on a general purpose computer, without specifying how the server would actually do the filtering. Tihis determination was upheld on appeal.
Judge Casper has now denied Activision’s motion for attorneys’ fees, finding that Activision had not demonstrated by clear and convincing evidence that the case was exceptional. Activision had noted statements by Wolds pointing out the risk of a finding of invalidity if the suit were brought. The acknowledgement of such a risk, standing alone, was found not to render the suit objectively unreasonable. Moreover, Activision’s failure to file a motion to dismiss or seek summary judgment under Alice until 2015, more than a year after the Alice decision came down, suggested that the case was not unreasonable. She refused to view the continued pressing of the claims that the PTAB had found invalid over prior art as showing unreasonableness, as that finding ultimately was rescinded and was not considered by the Court. In terms of litigation conduct, Judge Casper noted that much of the delay in the case resulted from a four-year stay pending IPR that was thrown out because Activision hid its being the real party in interest, thus bringing about the delay.
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