Utherverse Gaming LLC v. Epic Games Inc

Opinion

6 UNITED STATES DISTRICT COURT 7 WESTERN DISTRICT OF WASHINGTON

9 UTHERVERSE GAMING LLC, Case No. C21-799-RSM-TLF 10

11 Plaintiff, ORDER RE: CLAIMS CONSTRUCTION

12 v. 13 EPIC GAMES INC., 14 Defendant. 15

17 This matter comes before the Court on the parties’ briefs regarding Claim Construction. 18 Dkts. #72 and #76. Oral argument was held on August 16, 2022, pursuant to Markman v. 19 Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995). Having reviewed all of the parties’ 20 briefing, and having considered the arguments and evidence presented in the Markman 21 22 Hearing, the Court makes the following rulings regarding the patent claim terms at issue. 24 Plaintiff Utherverse Gaming LLC (“Utherverse”) alleges Defendant Epic Games has 25 infringed four of its patents: United States Patent Nos. 8,276,071 (“071 Patent”); 8,812,954 26 (“954 Patent”); 9,123,157 (“157 Patent”); and 9,724,605 (“605 Patent”). 27 28 Utherverse is a company involved in the creation and maintenance of virtual online 1 2 worlds. The inventions at issue were developed by Brian and Gary Shuster, two brothers, and 3 their colleague Aaron Burchin. Dkt. #1 at 1. 4 Epic Games is a video game and software developer that publishes games, including 5 Fortnite, that can be played on a broad array of different platforms and operating systems. As 6 alleged in the Complaint, “more than 350 million participants are registered players of Fortnite, 7 8 with tens of millions of participants collectively logging billions of hours of gameplay each 9 month.” Id. at 3. Utherverse claims that “to accommodate so many participants in the same 10 virtual world for virtual social events and concerts, Epic uses the inventions claimed by the 11 Asserted Patents.” Id. 12 13 The ’071, ’954, and ’157 patents share a substantively identical specification and relate 14 to multi-instance, multi-user animation platforms (“MMAP”). These MMAP patents purport to 15 solve problems related to constraints on the number of players who can access multiplayer 16 virtual worlds—online spaces with players interacting with each other. The MMAP patents’ 17 purported solution is to make copies of a particular space within the virtual world, such as a 18 19 virtual nightclub, so different groups of players can experience their own copy of the space. 20 Unlike the first three patents, the purported invention of the ’605 patent is a method of 21 playing back a recorded experience in a virtual environment, where the player can navigate that 22 recorded experience and interact with other players doing the same. 23 Earlier in this litigation Epic Games moved to dismiss arguing these claims are for 24 25 abstract ideas unpatentable under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 26 573 U.S. 208 (2014). The Court denied this Motion and proceeded to the claims construction 27 phase. See Dkt. #57. 28 The parties submitted a Joint Claim Construction and Prehearing Statement that 1 2 identified certain claim terms in dispute, found in various places in all three patents. Dkt. #63. 3 The parties also submitted a chart containing the following proposed constructions: 4 Term Utherverse’s Construction Epic’s Construction 5 Avatar A computer-generated representation A computer-generated figure in a 6 of a character in a virtual virtual environment that represents environment. and is operated by a human player. 7 Common A defined (i.e. bounded) area or A defined area or portion of a 8 Space portion of multiple dimensions that virtual environment that is visible provides for simultaneous (i.e., real- and/or audible to avatars located in 9 time) interactions with multiple multiple parallel dimensions of a parallel dimensions/instances. separate area or portion of the 10 virtual environment. 11 Initial scene An initial state of a scene including at Scene state information, including state least a position and orientation of at least a position and orientation 12 objects in a virtual world. of objects, including avatars, rendered in the scene at a 13 beginning of a time period of a new 14 recording of a scene. Modeling Numerically describing objects and Defining the positions of a set of 15 spatial relationships. points such that they form the shape of an object or space that can 16 be rendered. 17 Multi- An avatar capable of existing in more An avatar present in two or more dimensional than one dimensions/instances. parallel dimensions of a virtual 18 avatar space. 19 Parallel Simultaneously existing dimensions Indefinite. dimension/ in a virtual reality universe, each of 20 Parallel which are originally duplicates or instance recognizable counterparts of one 21 another. 22 Recorded [Data representative of] a scene, [A file containing] a recording of a experience including an initial scene state and prior experience that occurred in a 23 [file] changes to that scene over time, virtual environment. which can later be rendered to allow 24 for real-time interaction in a newly 25 instantiated scene. Video Plain and ordinary meaning. A separately recorded successive 26 inserted series of images that is inserted into the scene as video playback. 27 28 Dkt. #63-1. 1. 071 Patent 1 2 The 071 Patent is titled “Multi-Instance, Multi-User Animation Platforms” (MMAP) and 3 was issued on September 25, 2012. Dkt. #1-4. Utherverse alleges Epic infringed “at least” 4 Claim 8 of the 071 Patent. Claim 8 depends on Claim 1 and incorporates Claim 1. Claim 1 5 states: 6 A method for managing a multi-instance, multi-user animation 7 process, comprising: modeling, using a computer, a plurality of 8 parallel dimensions in a computer memory, each of the plurality of parallel dimensions being a replica of a modeled three dimensional 9 space configured for modeling occupancy and movement of multiple avatars within limits that are defined by at least one model 10 of a three dimensional object; 11 assigning ones of a plurality of avatars within the computer 12 memory so that each of the plurality of avatars populates a respective one of the parallel dimensions and each of the plurality 13 of parallel dimensions is populated by a unique subset of the plurality of avatars, so as to prevent over-population of any one of 14 the parallel dimensions by avatars; and 15 animating ones of the plurality of avatars populating different ones 16 of the parallel dimensions in response to input from respective corresponding ones of the plurality of clients to provide virtual- 17 reality data, using the computer, the virtual-reality data configured 18 to enable clients to output an animated display of a corresponding one of the parallel dimensions and avatars populated therein. 19 Dkt. #1-4 at 19-20. Claim 8 of the 071 Patent states: 20 The method of claim 1, further comprising modeling a common 21 space in the computer memory configured in relation to the 22 plurality of parallel dimensions so that at least one object located inside the common space is visible from view-points located inside 23 each of the plurality of parallel dimensions. 24 Id. at 20. 25 // 26 // 27 // 28 2. 954 Patent 1 2 The 954 Patent is titled “Multi-Instance, Multi-User Virtual Reality Spaces” and was 3 issued on August 19, 2014. Dkt. #1-5. Plaintiff alleges that defendant infringed “at least” 4 Claim 4 of the 954 Patent. Claim 4 incorporates Claim 1. Claim 1 of the 954 Patent states: 5 A method, comprising: 6 modeling in a computer memory, multiple parallel instances of a 7 multi-dimensional virtual reality space, each of the plurality of parallel instances replicating the multi-dimensional virtual reality 8 space; 9 assigning ones of a plurality of modeled multi-dimensional avatars 10 within the computer memory so that each of the plurality of avatars populates a respective one of the parallel instances and each of the 11 plurality of parallel instances is populated by a unique subset of the plurality of avatars, wherein the assigning limits a total number of 12 the plurality of avatars in each of the unique subsets; and 13 generating an additional parallel instance of the multi-dimensional 14 virtual reality space, based on detecting an increase in a number of plurality of client devices providing input to the modeling for 15 controlling ones of the plurality of modeled multi-dimensional 16 avatars. 17 Dkt. #1-5 at 19-20. Claim 4 states: 18 The method of claim 1, further comprising modeling a common space in the computer memory configured in relation to the 19 plurality of parallel instances so that at least one object located 20 inside the common space is visible from view-points located inside each of the plurality of parallel instances. 21 Id. at 20. 22 3. 157 Patent 23 The 157 Patent is titled “Multi-Instance, Multi-User Virtual Reality Spaces” and was 24 25 issued on September 1, 2015. Dkt. #1-6. Plaintiff alleges that defendant infringed “at least” 26 Claim 1 of the 157 Patent. Claim 1 states: 27 A method comprising: 28 modeling, in a computer memory, multiple parallel instances of a 1 multi-dimensional virtual reality space, each of the plurality of 2 parallel instances replicating the multi-dimensional virtual reality space; 3 assigning ones of a plurality of modeled multi-dimensional avatars 4 within the computer memory so that each of the plurality of avatars populates a respective one of the parallel instances and each of the 5 plurality of parallel instances is populated by a unique subset of the 6 plurality of avatars, wherein the assigning limits a total number of the plurality of avatars in each of the unique subsets; and 7 modeling a common space in the computer memory configured in 8 relation to the plurality of parallel instances so that at least one 9 object located inside the common space is visible from viewpoints located inside each of the plurality of parallel instances. 10 Dkt. #1-6 at 19. 11 4. 605 Patent 12 The 605 Patent is Titled “Method, System and Apparatus of Recording and Playing 13 14 Back an Experience in a Virtual Worlds System” and was issued on August 8, 2017. Dkt. #1-7. 15 Plaintiff alleges that defendant infringed “at least” Claim 2 of the 605 Patent, which 16 incorporates Claim 1. Claim 1 states: 17 A method of playing back a recorded experience in a virtual 18 worlds system, comprising: 19 instantiating, using one or more processors of a server, a new 20 instance of a scene, the new instance being defined by data stored in memory, at least one client device displaying and participating 21 in the new instance; 22 retrieving a recorded experience file from the memory, the recorded experience file having been generated by saving an initial 23 scene state and saving subsequent changes and respective times 24 during a time period of the recorded experience; 25 playing back the recorded experience file by rendering for display by the at least one client device, objects of the initial scene state in 26 the new instance, including one or more avatars and rendering 27 updates to the initial scene state based on the subsequent changes over the time period; and 28 automatically transporting the one or more avatars to a different 1 new instance of the scene, upon occurrence of a threshold event, 2 wherein the threshold event comprises when a maximum capacity of avatars has been reached in the new instance of the scene. 3 Dkt. #1-7 at 16. Claim 2 states: 4 The method of claim 1, wherein movement within the new 5 instance by the one or more avatars associated with at least one 6 client device is limited by objects of the recorded experience. 7 Id. 8 Claim 17 of the ’605 patent states in part, “one or more servers instantiating a new 9 instance of a scene…. wherein the new instance comprises video inserted into the new instance 10 of the scene….” Id. at 17. 11 13 A. Claim Construction Principles 14 Patent claim construction is a question of law for the Court, even if the case is 15 designated to go to a jury trial, but it may have underlying factual determinations that are now 16 17 reviewed for clear error. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837, 190 L. 18 Ed. 2d 719 (2015); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en 19 banc), aff'd, 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). After the claims have 20 been properly construed, the fact-finder will compare the claims to the allegedly infringing 21 22 product or process. The comparison is conducted on an element-by-element basis. 23 When interpreting claims, a court’s primary focus should be on the intrinsic evidence of 24 record, which consists of the claims, the specification, and the prosecution history. Phillips v. 25 AWH Corp., 415 F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). The Court should begin by 26 examining the claim language. Id. at 1312. Claim language should be viewed through the lens 27 28 of a person of “ordinary skill in the relevant art at the time of the invention.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1283 (Fed. Cir. 2005). A court should give the claim’s 1 2 words their “ordinary and customary meaning.” Phillips, 415 F.3d at 1312-13 (quotation 3 omitted). In construing a claim term’s ordinary meaning, the context in which a term is used 4 must be considered. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003). 5 However, the claims “must be read in view of the specification, of which they are a 6 part.” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979. Additionally, the doctrine 7 8 of claim differentiation disfavors reading a limitation from a dependent claim into an 9 independent claim. See InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, 690 F.3d 1318, 10 1324 (Fed. Cir. 2012). The specification can offer “practically incontrovertible directions 11 about a claim meaning.” Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). 12 13 “When consulting the specification to clarify the meaning of claim terms, courts must take care 14 not to import limitations into the claims from the specification.” Id. “[A]lthough the 15 specification may well indicate that certain embodiments are preferred, particular embodiments 16 appearing in the specification will not be read into claims when the claim language is broader 17 than such embodiments.” Tate Access Floors, Inc. v. Maxcess Techns., Inc., 222 F.3d 958, 966 18 19 (Fed. Cir. 2000) (quotation omitted). “By the same token, the claims cannot enlarge what is 20 patented beyond what the inventor has described in the invention.” Abbott Labs., 566 F.3d at 21 1288 (internal quotation omitted). “Likewise, inventors and applicants may intentionally 22 disclaim, or disavow, subject matter that would otherwise fall within the scope of the claim.” 23 Id. at 1288. 24 25 In addition to the specification, a court should consider the patent’s prosecution history, 26 which consists of “the complete record of the proceedings before the PTO and includes the 27 prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. However, 28 because the prosecution represents an “ongoing negotiation” rather than the “final product” of 1 2 the negotiation, “it often lacks the clarity of the specification and thus is less useful for claim 3 construction purposes.” Id. Consulting the prosecution history can, however, be helpful in 4 determining whether the patentee disclaimed an interpretation during prosecution. Research 5 Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1296 (Fed. Cir. 2005). “Under the 6 doctrine of prosecution disclaimer, a patentee may limit the meaning of a claim term by making 7 8 a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. 9 Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); see also Chimie v. PPG Indus., Inc., 10 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in 11 construing a claim is to ‘exclude any interpretation that was disclaimed during prosecution.’”). 12 13 Although courts are permitted to consider extrinsic evidence, like expert testimony, 14 dictionaries, and treatises, such evidence is generally of less significance than the intrinsic 15 record. Phillips, 415 F.3d at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 16 862 (Fed. Cir. 2004)). Extrinsic evidence may not be used “to contradict claim meaning that is 17 unambiguous in light of the intrinsic evidence.” Id. at 1324. 18 19 “A patent is invalid for indefiniteness if its claims, read in light of the patent’s 20 specification and prosecution history, fail to inform, with reasonable certainty, those skilled in 21 the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 22 2120, 2123 (2014). “Indefiniteness is a legal determination; if the court concludes that a 23 person of ordinary skill in the art, with the aid of the specification, would understand what is 24 25 claimed, the claim is not indefinite.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 26 1381 (Fed. Cir. 2015) (citation omitted) (finding the challenged claim term not indefinite). 27 Patents are presumed valid, and a challenger must prove invalidity by clear and convincing 28 evidence. Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). If a single 1 2 claim limitation is indefinite, the entire claim is invalid. 3 B. 071, 954 and 157 Patent Terms for Construction 4 1. “Avatar” 5 The first claim term in dispute is “Avatar.” The Patents expressly distinguish between 6 “an automated entity or person” and “avatars,” which are operated by human players: the 7 8 “player’s avatar may interact with an automated entity or person, simulated static objects, or 9 avatars operated by other players.” 071 patent at 1:42-45; 605 patent at 1:30-32 (emphasis 10 added). 11 The claims themselves make clear that avatars are operated by human players. Claim 1 12 13 of the 071 patent, for example, requires that the “avatars” are “animat[ed] . . . in response to 14 input from respective corresponding ones of a plurality of clients.” 071 patent at 18:63-66. In 15 this context, the “clients” are the devices used by players, such as a personal computer or cell 16 phone, to interact with the virtual world. See 071 patent at 6:29-34, 7:26-30, 7:49-52. Input 17 from the “client” is therefore synonymous with input from a human player. See id. Similarly, 18 19 claim 2 of the 605 patent describes that “movement within the new instance by the one or more 20 avatars associated with at least one client device is limited by objects of the recorded 21 experience.” 605 patent at 10:59-62. Again, the client device is operated by a human player, so 22 the avatars are as well. See id. at 7:13-17. 23 The only thing Utherverse points to in the intrinsic record to support its proposed 24 25 construction are two passing references in the MMAP patents to a “robot avatar” and a 26 reference in the 605 Patent to a “bot avatar.” See Dkt. #76 at 10 (citing the 071 and 605 27 patents). 28 The Court agrees with Epic and its expert that “[a] robot avatar is no more a ‘type’ of 1 2 avatar than a ‘robot child’ would be a ‘type’ of child, or a plastic flower would be a ‘type’ of 3 flower—each of these terms describe artificial facsimiles of the real thing they represent.” Dkt. 4 #72 at 9. The adjective “robot” in the patents does not water down the definition of avatar to 5 the point of including non-player characters, it merely reads as an oxymoron reasonably 6 interpreted by one skilled in the art as a non-player character rather than an avatar. To 7 8 conclude otherwise would be to disregard the extensive references in the patents above to how 9 the avatars are operated by a human player. On this basis alone the Court could find in favor of 10 Epic. The Court also finds that Utherverse’s construction is inconsistent with how an ordinary 11 artisan would understand the term “avatar,” a ubiquitous term used in gaming for decades. The 12 13 Court therefore adopts Epic’s construction of this term for all the patents at issue in this case, 14 including the 605 Patent. 15 2. Common Space 16 Both sides agree that a “space” is a defined area or portion of a virtual environment, but 17 dispute what it means for a space to be a “common space.” The parties agree that this is a term 18 19 coined by the inventors. “Idiosyncratic language, highly technical terms, or terms coined by 20 the inventor are best understood by reference to the specification.” Intervet Inc. v. Merial Ltd., 21 617 F. 3d 1282, 1287 (Fed. Cir. 2010). 22 The intrinsic record states that “[in] an embodiment of the inventions, a defined area or 23 portion of multiple dimensions may be visible to, and/or interact with, other parts or members 24 25 of the dimensions.” ’071:5:24-26. The specification otherwise clearly provides the basis for the 26 Utherverse Gaming construction. The intrinsic record is clear as to the meaning and manner of 27 28 interaction with the common space. The Court need not look to the extrinsic record and will 1 2 adopt Utherverse’s construction. 3 3. Modeling 4 The Court agrees with Epic that Utherverse’s definition of modeling is “overly broad 5 because it encompasses virtually every aspect of computer graphics.” Dkt. #72 at 16. These 6 patents use the term “modeling” not to refer to the creation of a model by an artist during 7 8 software development, but rather the process of defining the model in computer memory (i.e., 9 defining the positions of a set of points that constitute the “model”) when the virtual world is 10 running. Epic’s construction more closely aligns with the patent language. See Id. at 17. 11 Utherverse’s objections to Epic’s construction are unconvincing given the expert reports and 12 13 how modeling versus texturing has been defined in the claims and in the art. The Court adopts 14 Epic’s construction. 15 4. Multi-Dimensional Avatar 16 The Court adopts the construction found in a clear reference in the patents: an avatar 17 “that has a multi-instance presence in more than one dimension.” 071 patent at 5:54-55; 954 18 19 patent at 5:54-55 (“In both of the foregoing examples, the performer and the clerk provide 20 examples of an object—e.g., an avatar—that has a multi-instance presence in more than one 21 dimension.”). Considering the briefing and oral argument, the parties have presented no valid 22 reason to deviate from this clear description in the specification. 23 5. Parallel Dimension/Parallel Instance 24 25 These terms are used interchangeably by the patents. The Court construes “parallel 26 dimension” and “parallel instance” as expressly defined in the specification: “a duplicate or 27 recognizable counterpart of a bounded, computer-modeled space that is accessible via a 28 common environment.” 071 patent at 13:37-39. The Court declines to find this term indefinite 1 2 at this time. 3 C. 605 Patent Terms for Construction 4 1. Initial Scene State 5 The parties’ constructions are very similar, if worded differently, except that Epic’s 6 construction includes the position and orientation of avatars. The Court will adopt Epic’s 7 8 construction, which incorporates verbatim the 605 patent’s express definition: “[t]he initial 9 scene state includes at least a position and orientation of objects, including avatars, rendered in 10 the scene at a beginning of a time period of a new recording.” 605 patent at 6:7-9. Although 11 both parties argue that Epic’s construction improperly requires the presence of avatars, the 12 13 Court does not read it that way. Avatars may simply be included. 14 2. Recorded Experience [file] 15 Epic argues that, based on the intrinsic record, a “recorded experience” must be from a 16 prior experience rather than a display allowing for real-time interaction. 17 During prosecution, the inventors expressly disclaimed any interpretation of “recorded 18 19 experience” that would include “new gameplay”: 20 Thus, the instant invention allows users to participate in past events (in other words, travel back in time) and participate in a 21 recorded experience. However, the participants cannot modify the 22 recorded experience file by the actions or events occurring during the playback of the file. This is significantly different from 23 Chimes, which provides for new gameplay beginning at a target point, and modification of the gameplay subsequent to the target 24 point. 25 Dkt. #73 (“Martino-Weinhardt Decl.”), Ex. H (11/7/2016 Applicant Remarks) at 9. 26 27 28 The Court agrees with Epic that Utherverse’s proposed construction runs afoul of this 1 2 disclaimer by encompassing new gameplay. The Court finds that Epic’s construction offers at 3 least some insight into the claim scope and therefore adopts it. 4 3. Video Inserted 5 Utherverse argues for the plain and ordinary meaning of this term, and the Court agrees. 6 The meaning and scope of this term is readily apparent even to lay persons. Epic’s 7 8 construction pointlessly breaks down the term “video” to mean a “recorded successive series of 9 images” and uses the term “inserted” to help construe “inserted.” The Court may properly 10 resolve a dispute “by declining to adopt [Defendants’] construction and giving the terms their 11 plain and ordinary meaning.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 12 13 1312, 1325-26 (Fed. Cir. 2012). Such is the case here. 14 D. Whether the Preambles are Limiting 15 “Generally, the preamble does not limit the claims.” Allen Eng'g Corp. v. Bartell 16 Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (citation omitted). Absent an indication that 17 a preamble gives “life, meaning, and vitality” to a claim, it should not be construed as an 18 19 affirmative limitation. See Pitney Bowes, Inc. v Hewlett-Packard Co., 182 F.3d 1298, 1305 20 (Fed. Cir. 1999). 21 In a nutshell, Epic argues that the Court needs to find the preambles limiting because 22 they use terms like “computer,” “memory,” and “computer processor coupled to a memory” 23 without indicating that the activities in the patent must be performed by the same computer. 24 25 Utherverse argues these should be given their plain and ordinary meaning and that the 26 preambles should not be construed as limiting these patents to situations involving a single 27 28 computer. After considering the briefing of the parties and arguments at the hearing, the Court 1 2 agrees with Utherverse and declines to rule that the preambles are limiting. 4 This Court has construed the disputed claim terms in this case as set forth above, and 5 the Clerk is directed to send a copy of this Order to all counsel of record. 6

7 8 DATED this 20th day of October, 2022. 9 10 A 11 13 UNITED STATES DISTRICT JUDGE

15 16 17 18 19 20 21 22 23 24 25 26 27 28