DOCSLIB.ORG

Of Nonobviousness in Design Patents Janice M

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Of Nonobviousness in Design Patents Janice M Kentucky Law Journal Volume 99 | Issue 3 Article 2 2011 Overcoming the "Impossible Issue" of Nonobviousness in Design Patents Janice M. Mueller University of Pittsburgh Daniel Harris Brean The Webb Law Firm Follow this and additional works at: https://uknowledge.uky.edu/klj Part of the Intellectual Property Law Commons Right click to open a feedback form in a new tab to let us know how this document benefits you. Recommended Citation Mueller, Janice M. and Brean, Daniel Harris (2011) "Overcoming the "Impossible Issue" of Nonobviousness in Design Patents," Kentucky Law Journal: Vol. 99 : Iss. 3 , Article 2. Available at: https://uknowledge.uky.edu/klj/vol99/iss3/2 This Article is brought to you for free and open access by the Law Journals at UKnowledge. It has been accepted for inclusion in Kentucky Law Journal by an authorized editor of UKnowledge. For more information, please contact [email protected]. Kentucky Law Journal VOLUME 99 2010-2011 NUMBER 3 ARTICLE Overcoming the "Impossible Issue" of Nonobviousness in Design Patents Janice M. Mueller andDaniel Harris Brean ABSTRACT The United States offers legal protectionfor designs-the overall aesthetic appearances of objects-through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitariandevice mandates a "nonobvious" advance over earlier technology, the patentability of a new and ornamental design requires that it differ from priordesigns to an extent that would not have been "obvious to a designer of ordinary skill who designs articles of the type involved." Ostensiblypromoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that time forward,the design patent system has languishedfrom prolonged inattention ratherthan benefitedfrom any purposeful development. Even the initialimposition of a qualitativerequirementfor "invention" in designs (from which the modern requirement of nonobviousness derives) was likely theproduct of a typographicalerror Failingto appreciatethe fundamental distinctions between designs and utility inventions, the legislature and judiciary have repeatedly sought to assimilate these very different types of intellectualproperty.Nowhere in the design patentsystem is this assimilation more harmful than in the imposition of the nonobviousness requirement. i Janice M. Mueller is a Professor of Law at the University of Pittsburgh, a registered pat- ent attorney, and a former law clerk to the late Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit. Mueller was a Visiting Professor at the University of Kentucky College of Law during the Spring 2oo semester. Daniel Harris Brean is an associate at The Webb Law Firm in Pittsburgh, Pennsylvania, and a registered patent attorney. Our thinking about how to improve legal protection for designs benefited greatly from conversations with Professor Dr. Annette Kur of the Max Plank Institute for Intellectual Property, Competition, and Tax Law, Munich, Germany; Donald S. Chisum, Co-Founder and President, Chisum Patent Academy; and Perry J. Saidman, Principal, Saidman DesignLaw Group. Industrial designers Randy Rossi, Ron Spears, George McCain, Tucker Viemeister, Cooper Woodring, Ron Kemnitzer, Tony Shoemaker, and Paul McGroary provided essential information and insights about the creative process of design. We thank Pitt Law Librarian Linda Tashbook and Pitt Law student Brian J. Jackson for their research assistance. All views expressed herein (as well as any errors) are our own and should not be attributed to our respective employers. We welcome comments by e-mail to [email protected] and [email protected]. 419 42o0 KENTUCKY LAW JOURNAL [Vol. 99 The U.S. Patent and Trademark Office (USPTO) and courts continue to struggle with gauging the nonobviousness of designs despite repeated acknowledgement that the requirement is inapt, subjective, unworkable, and even "impossible." Although design protection would be more appropriatelyprovided through a sui generis system outside the patent regime, a wholesale restructuringof U.S. designprotection appearsunlikely. Nonobviousness therefore continues to be imposedfor design patentability. Our insight is that courts and the USPTO have previously unrecognized flexibility in how they apply the nonobviousness requirement to designs. Drawingfromthe industrialdesign literatureas wellas our interviews with experienceddesigners of differing careerpaths, we conclude that the current nonobviousness framework is fundamentally misaligned with the creative processes and objectives of designers. We accordingly propose a number of powerful yet practical tools for reconceptualizing the nonobviousness requirement in a manner that truly promotes innovation in design. The Federal Circuit's recent decisions in Egyptian Goddess v. Swisa, Titan Tire v. Case New Holland, and International Seaway v. Walgreens signala welcomejudicial receptiveness to rethinking design nonobviousness. The time is rpe to bridge the gap between design patent standardsand the reality of design. ThisArticleoffers a roadmapforovercomingthesupposedly "impossible issue" of applying the nonobviousness requirement to designs. TABLE OF CONTENTS ABSTRACT . .................................................. 419 INTRODUCTION.............................................422 I. THE PURPOSE AND PROCESS OF DESIGN ..... .................... 433 A. The Traditional Purpose and Process of Utility Invention ... 435 B. The Motivation and Methodology of Design .............. 436 II. THE DISCORDANT DEVELOPMENT OF INDUSTRIAL DESIGN AND U.S. DESIGN PATENT LEGISLATION....................................445 A. The Origins of Industrial Design in the United States ........ 445 B. The Impetus for Design Protection Legislation in the United States... ............................... ..... 448 C. The Evolution and Impact of U.S. Design Patent Legislation ....................................... 452 D. Renewed Legislative Efforts Paralleled Emerging Schools of Industrial Design .... ................................ 461 E. Modern Congressional Inaction in the Face of the Design "Problem" ....................................... 465 I1. THE JUDICIARY'S ONGOING STRUGGLE WITH THE "IMPOSSIBLE ISSUE" OF NONOBVIOUSNESS IN DESIGNS ............................... 468 A. The Supreme Court's Mixed Messages in Gorham and Whitman Saddle... ............................. ........ 470 2010-2011 NONOBVIOUSNESS IN DESIGN PATENTS 421 B. Fallout and Dissonance in the Regional Circuits and the C.C.P.A ......................................... 478 1. District and Regional Circuit Cases ................... 478 2. C.C.P.A. Cases .................................. 480 a. In re Schnell's Initial Take on "Applied" Design ........ 480 b. The Apology of In re Faustmann for the Invention Requirement . ................................ 483 c. In re Jennings and In re Glavas on Whether and How to Combine References Cited Against Designs .............. 485 i. In re Rosen Sets the Modern Standard ............. 489 d. In re Laverne versus In re Nalbandian:Shifting Perspectives for the Design Nonobviousness Analysis....... ..... 493 C. Refinement in the Federal Circuit-For Better or Worse ...... 501 1. Clarifying the "Suggestion" Prong ....................... 501 2. Titan Tire Skirts the Looming KSR Issue .................. 507 3. InternationalSeaway Unncessarily Complicates the Analysis.. 511 4. Summary......................................516 IV. RECOMMENDATIONS ........................................... 516 A. Recognize That Supreme Court Decisions Applying the Nonobviousness Requirement to Utility Inventions Have Very Limited, if any, Applicability to Design Patentability ............ 517 B. Fine-Tune the Nonobviousness Requirement for Non-Utility Subject Matter by Looking to the Plant Patent Example ....... 523 C. Utilize Gorham's "Ordinary Observer" as the Statutory "Person Having Ordinary Skill in the Art" When Determining the Nonobviousness of Designs............................527 1. An "Ordinary Observer" Perspective Properly Emphasizes the Visual Nature of Design Patent Subject Matter ............. 529 2. The Validity/Infringement Parallelism of the Gorham "Ordinary Observer" Perspective Should Extend to Design Patent Nonobviousness........ .................. 531 3. The European Union's Design Protection Experience Should Inform the Proposed "Ordinary Observer" Perspective for U.S. Design Patent Nonobviousness ..................... 533 D. Limit Design Anticipation to "Strict Identity" Situations and Apply the Gorham "Substantial Similarity" Test as the Measure of Design Obviousness ................................ 540 E. Modify or Eliminate the Current Procedure of Combining Prior Art Designs to Establish Design Obviousness ... ............. 544 F. Implement Mechanisms in the USPTO to Obtain and Apply More and Better Design Prior Art ... ...................... 549 1. Improve Design Prior Art Searching Capability ............ 549 2. Make More Frequent Use of Examiner Requests for Information .................................... 550 422 KENTUCKY LAW JOURNAL [Vol. 99 3. Publish the Content of Pending Design Patent Applications... 551 4. Summary.... .......................... ...... 552 CONCLUSION ... .............................................. 553 INTRODUCTION make and ornamental features that D productsESIGNs-the visually exterior appealing shapes and desirable to consumers-are fundamentally different from the
Load more

Recommended publications
  • Federal Circuit Year in Review
    ss TABLE OF CONTENTS Page INTRODUCTION .......................................................................................................................... 1 ACKNOWLEDGEMENT .............................................................................................................. 2 GIBSON DUNN’S FEDERAL CIRCUIT CLERKS ..................................................................... 3 STATISTICAL ANALYSIS .......................................................................................................... 6 INDEX BY ISSUE ....................................................................................................................... 28 CASE SUMMARIES ................................................................................................................... 44 ALPHABETICAL INDEX OF ALL CASES ............................................................................. 133 INTRODUCTION The Federal Circuit’s 2019‒2020 term saw a number of important developments in patent law. The Court issued 130 published opinions. This term included significant panel decisions in patent law jurisprudence with regard to the constitutionality of the PTAB and its jurisdiction and procedures (Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), Samsung Electronics America, Inc. v. Prisua Engineering Corp., 948 F.3d 1342 (Fed. Cir. 2020), and Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020)), subject matter eligibility (American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir.
    [Show full text]
  • Patent Law: a Handbook for Congress
    Patent Law: A Handbook for Congress September 16, 2020 Congressional Research Service https://crsreports.congress.gov R46525 SUMMARY R46525 Patent Law: A Handbook for Congress September 16, 2020 A patent gives its owner the exclusive right to make, use, import, sell, or offer for sale the invention covered by the patent. The patent system has long been viewed as important to Kevin T. Richards encouraging American innovation by providing an incentive for inventors to create. Without a Legislative Attorney patent system, the reasoning goes, there would be little incentive for invention because anyone could freely copy the inventor’s innovation. Congressional action in recent years has underscored the importance of the patent system, including a major revision to the patent laws in 2011 in the form of the Leahy-Smith America Invents Act. Congress has also demonstrated an interest in patents and pharmaceutical pricing; the types of inventions that may be patented (also referred to as “patentable subject matter”); and the potential impact of patents on a vaccine for COVID-19. As patent law continues to be an area of congressional interest, this report provides background and descriptions of several key patent law doctrines. The report first describes the various parts of a patent, including the specification (which describes the invention) and the claims (which set out the legal boundaries of the patent owner’s exclusive rights). Next, the report provides detail on the basic doctrines governing patentability, enforcement, and patent validity. For patentability, the report details the various requirements that must be met before a patent is allowed to issue.
    [Show full text]
  • Argentina Argentine Argentinien Report Q169 in the Name of The
    Argentina Argentine Argentinien Report Q169 in the name of the Argentinean Group by Ernesto O'FARRELL and Gustavo P. GIAY Criminal law sanctions with regard to the infringement of intellectual property rights 2. Substantive Law 2.1 Penal sanctions have been in force since long before the TRIPS Treaty was adopted by Argentina. A special Law improving penal sanctions related with infringement of software has been enacted after TRIPS. 2.2 Regarding trademarks, a special intentional element is not necessary, because the Law presumes that dealers are expected to keep accurate records of their commercial opera- tions, and should be able to prove the source from which they obtained the infringing goods, so that the owner of the trademark may prosecute the party or parties responsible for the infringement. This point of view has been ratified by a quite recent Supreme Court decision in re Sandys Confezioni S.P.A. (S. 350-XXII, March 13, 1990). With respect to copyright and patents, the courts normally require that the culprit has had a reasonable opportunity to be aware of the rights protected that he has infringed, which is almost equivalent to the requirement of an intentional element. In general, the burden of proof has to be assumed by plaintiff, except, with respect to trademarks and patents, when the culprit refuses to give proof and information regarding: a) the name and address of whoever sold or deliver the infringing goods, when such transaction took place, as well as to exhibit the respective invoices; b) the amount of units manufactured or sold and their price, as well as to exhibit the sale invoices.
    [Show full text]
  • Design Patent Infringement: Post- Egyptian Goddess
    DESIGN PATENT INFRINGEMENT: POST- EGYPTIAN GODDESS Marta Kowalczyk* I. INTRODUCTION The United States Court of Appeals for the Federal Circuit overturned de- sign patent precedent in its en banc decision in Egyptian Goddess, Inc. v. Swisa Inc.1 Prior to Egyptian Goddess, courts had been applying a two-prong test to determine design patent infringement. Egyptian Goddess eliminated one of those prongs: the point of novelty test.2 The Federal Circuit in Egyptian God- dess instead only focused on one test, the ordinary observer test, to determine design patent infringement.3 The Federal Circuit not only held the ordinary observer test to be the sole test in determining design patent infringement but also modified this test.4 This recent development discusses the rejection of the point of novelty test and the modification of the ordinary observer test in Egyptian Goddess.5 Part II briefly overviews design patent law prior to Egyptian Goddess, focusing on the evolution of the two-prong test of design patent infringement. Part III discusses the facts and analysis of Egyptian Goddess. Part IV reviews case law post-Egyptian Goddess and comments on the effects of Egyptian Goddess on design patent infringement law. Part V provides concluding remarks on the future of design patent law post-Egyptian Goddess. II. DESIGN PATENT LAW PRE-EGYPTIAN GODDESS Prior to Egyptian Goddess, design patent holders were required to satisfy two separate tests in order to succeed in a design patent infringement claim: the ordinary-observer test and the point of novelty test. This Part discusses the framework of the aforementioned tests.
    [Show full text]
  • The Integration of International and Domestic Intellectual Property Lawmaking
    Essay: The Integration of International and Domestic Intellectual Property Lawmaking by Graeme B. Dinwoodie* It is increasingly impossible to analyze intellectual property law and policy without reference to international lawmaking. That is not, however, merely because several recent domestic reforms have been prompted by international developments.1 Indeed, because of significant U.S. influence in the formation of contemporary intellectual property treaties, U.S. law has undergone less change than most in order to comply with newly-assumed international obligations. Nor is it simply because, in an era of global trade and technological advances, a state is unable effectively to regulate economic activity on its own. Rather, the need for a broader awareness flows most directly from the integration of the international and domestic lawmaking processes. Consider this historical example. As nations met in Berlin in 1908 to revise the Berne Convention, the United States received an invitation to attend with “full free- dom of action.”2 Instead, the Register of Copyrights attended only as an observer.3 The reason might now seem unduly quaint. Thorvald Solberg, the Register of Copyrights explained to the Conference that the United States found it impracticable to send a delegate authorized to commit it to actual adhesion to the Berne Convention since some of the questions to be discussed there were pending before the Congress and premature action at the Convention might embarrass the legislative branch of the Government.4 Today, in contrast, there is a conscious blending of domestic and international lawmaking. International lawmaking demands attention to Washington; and domestic lawmaking cannot be conducted without regard for what is going on in Brussels, * Associate Professor of Law, University of Cincinnati College of Law; LL.B., Glasgow University, 1987; LL.M., Harvard Law School, 1988.
    [Show full text]
  • Design Patent Claim Construction: Navigating Written Description
    Presenting a live 90-minute webinar with interactive Q&A Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack THURSDAY, AUGUST 10, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Christopher V. Carani, Shareholder, McAndrews Held & Malloy, Chicago Robert S. Katz, Esq., Banner & Witcoff, Washington, D.C. Nathan B. Sabri, Partner, Morrison & Foerster, San Francisco The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-819-0113 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail [email protected] immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again. Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar.
    [Show full text]
  • Chapter 6: Design and Design Frameworks: Investing in KBC and Economic Performance
    323 | DESIGN AND DESIGN FRAMEWORKS: INVESTMENT IN KBC AND ECONOMIC PERFORMANCE CHAPTER 6. DESIGN AND DESIGN FRAMEWORKS: INVESTMENT IN KBC AND ECONOMIC PERFORMANCE This chapter addresses the nature and the economic impact of design by looking at design-related intellectual property and how businesses protect their knowledge based capital. The chapter reviews the nature and various definitions of design and how design-related IP, specifically registered designs, relates to other formal IP mechanisms such as patents, trademarks, and copyright. It looks at the primary areas of design activity in a subset of OECD countries and investigates the similarities and differences of the constituent design IP regimes as well as the various treaties governing international design IP regulation. The review continues with an examination of how design-related IP functions in comparison to and in conjunction with other formal and informal IP protection mechanisms and what factors motivate firms to choose and appropriate combinations of protection mechanisms. By examining historical patterns of design registrations in a variety of ways, this chapter identifies trends, at the national level, of how firms perceive the importance of design-related IP. Analysis of national origins of registrations in both the European Community and the United States provides an indicator of the activity of those countries’ businesses relative to their proximities to the markets. It explores the existence of possible alternative indicators for design activity and of industry-specific variations across the sample set. The chapter concludes with a review of input and output measures as stated in the limited set of studies that have endeavoured to establish or quantify the value and/or benefit of design and design-related IP.
    [Show full text]
  • The “Article of Manufacture” Today
    Harvard Journal of Law & Technology Volume 31, Number 2 Spring 2018 THE “ARTICLE OF MANUFACTURE” TODAY Sarah Burstein* TABLE OF CONTENTS I. INTRODUCTION .............................................................................. 782 II. BACKGROUND .............................................................................. 785 A. Design Patentable Subject Matter ............................................ 785 B. Design Patent Claiming & Infringement ................................. 786 C. Remedies for Design Patent Infringement ............................... 788 III. WHAT IS THE “ARTICLE OF MANUFACTURE” IN § 289?.............. 789 A. The Apple/Nordock Rule .......................................................... 791 B. The Supreme Court Weighs In ................................................. 791 IV. WHY COURTS SHOULD NOT ADOPT THE GOVERNMENT’S APPROACH .................................................................................... 793 A. The Test .................................................................................... 794 1. The Underlying Premise ........................................................ 795 2. The Factors ............................................................................ 797 B. The Nature of the Inquiry ......................................................... 802 1. A Case-by-Case Inquiry? ...................................................... 802 2. Is it a Question of Fact or Law? ............................................ 807 C. The Burden of Proof................................................................
    [Show full text]
  • Fashion Frustrated: Why the Innovative Design Protection Act Is a Necessary Step in the Right Direction, but Not Quite Enough Casey E
    Brooklyn Journal of Corporate, Financial & Commercial Law Volume 7 | Issue 1 Article 9 2012 Fashion Frustrated: Why the Innovative Design Protection Act is a Necessary Step in the Right Direction, But Not Quite Enough Casey E. Callahan Follow this and additional works at: https://brooklynworks.brooklaw.edu/bjcfcl Recommended Citation Casey E. Callahan, Fashion Frustrated: Why the Innovative Design Protection Act is a Necessary Step in the Right Direction, But Not Quite Enough, 7 Brook. J. Corp. Fin. & Com. L. (2012). Available at: https://brooklynworks.brooklaw.edu/bjcfcl/vol7/iss1/9 This Note is brought to you for free and open access by the Law Journals at BrooklynWorks. It has been accepted for inclusion in Brooklyn Journal of Corporate, Financial & Commercial Law by an authorized editor of BrooklynWorks. FASHION FRUSTRATED: WHY THE INNOVATIVE DESIGN PROTECTION ACT IS A NECESSARY STEP IN THE RIGHT DIRECTION, BUT NOT QUITE ENOUGH INTRODUCTION In 2007, Proenza Schouler, headed by designers Jack McCullough and Lazaro Hernandez, released a capsule collection with Target through the store’s Go International Designer Collective.1 In 2011, Target re-released some of the items from the collection,2 an action that can certainly be attributed to the prior success of the collection itself, but also one that can be attributed to the explosive success Proenza Schouler has seen within the last several years.3 Much of this success is thanks to the PS1, a shoulder bag retailing for between $1,695 and $9,250 in its mid-range size4 that became the “It” bag of the fashion world immediately upon its release in 2008 and has yet to see any hint of a decline.5 However, in the same year, Target released a $34.99 messenger bag that looked alarmingly similar to the PS1—so similar, in fact, that it was brought to the attention of the PS1 designers, who were not very happy about it.6 Shirley Cook, CEO of Proenza Schouler, voiced their frustration by saying, “So our product is in Target right now, and then this bag comes out .
    [Show full text]
  • Designwrites 2014 April Welcome to the Third Edition of Designwrites
    & DesignWrites 2014 April Welcome to the third edition of DesignWrites At Bird & Bird we’re passionate about design. DesignWrites will unravel and explore the seemingly complex world of design protection, offering practical advice by looking at recent design cases, hearing from industry experts and sharing stories from the wider design community. If you would like advice on how best to protect your designs or take action to stop copycats, please contact Ewan Grist via [email protected] for a complimentary consultation. In this edition... Armchair design found to have individual character ..........3 Q&A with designer Julia Landsiedl ....................................18 The new German Design Act: more than just a new name? ...4 Registered Community design for corkscrew invalid due to earlier design ............................................20 For the love of fashion: protecting the beauty of fashion through Community design rights .....................................6 No design right protection for heart-shaped tomatoes .......21 Benelux: online design applications now possible ..............9 Italy special report: protecting your rights at Il Salone del Mobile of Milan ........................................ 22 Court of Appeal overturns first instance decision in Trunki design case ...................................................... 10 Design Museum: Designs of the Year 2014 ........................ 24 Upcoming industry events and awards ............................ 26 Registered UK design for a beer glass infringed .................12
    [Show full text]
  • An International Perspective on Design Protection of Visible Spare Parts
    SPRINGER BRIEFS IN LAW Dana Beldiman Constantin Blanke-Roeser An International Perspective on Design Protection of Visible Spare Parts 123 SpringerBriefs in Law SpringerBriefs present concise summaries of cutting-edge research and practical applications across a wide spectrum of fields. Featuring compact volumes of 50 to 125 pages, the series covers a range of content from professional to academic. Typical topics might include: • A timely report of state-of-the art analytical techniques • A bridge between new research results, as published in journal articles, and a contextual literature review • A snapshot of a hot or emerging topic • A presentation of core concepts that students must understand in order to make independent contributions SpringerBriefs in Law showcase emerging theory, empirical research, and practical application in Law from a global author community. SpringerBriefs are characterized by fast, global electronic dissemination, standard publishing contracts, standardized manuscript preparation and formatting guidelines, and expedited production schedules. More information about this series at http://www.springer.com/series/10164 Dana Beldiman • Constantin Blanke-Roeser An International Perspective on Design Protection of Visible Spare Parts 123 Dana Beldiman Constantin Blanke-Roeser Academic Director and Founder, Center Researcher, Center for Transnational for Transnational Intellectual Property Intellectual Property Bucerius Law School Bucerius Law School Hamburg Hamburg Germany Germany and UC Hastings College of the Law San Francisco USA ISSN 2192-855X ISSN 2192-8568 (electronic) SpringerBriefs in Law ISBN 978-3-319-54059-7 ISBN 978-3-319-54060-3 (eBook) DOI 10.1007/978-3-319-54060-3 Library of Congress Control Number: 2017934314 © The Author(s) 2017 This work is subject to copyright.
    [Show full text]
  • Case 1:12-Cv-10576-DJC Document 358 Filed 04/30/21 Page 1 of 19
    Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 1 of 19 UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS _________________________________________ ) WORLDS, INC., ) ) Plaintiff ) ) v. ) ) Civil Action No. 12-10576-DJC ACTIVISION BLIZZARD, INC., ) BLIZZARD ENTERTAINMENT, INC. and ) ACTIVISION PUBLISHING, INC., ) ) Defendants. ) _________________________________________ ) MEMORANDUM AND ORDER CASPER, J. April 30, 2021 I. Introduction 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 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.
    [Show full text]