Worlds Trial at PTAB

trials@uspto.
gov
IPR2015- 01264, Paper No. 41

IPR2015- 01268, Paper No. 43
IPR2015- 01269, Paper No. 41
IPR2015- 01319, Paper No. 41
IPR2015- 01321, Paper No. 41
IPR2015- 01325, Paper No. 41
September 12, 2016
571-272-7822
RECORD OF ORAL HEARING

UNITED STATES PATENT AND TRADEMARK OFFICE
-----BEFORE THE PATENT TRIAL AND APPEAL BOARD
-----BUNGIE, INC.,
Petitioner,
vs.
WORLDS INC.,
Patent Owner.
-----Case IPR2015-01264 (Patent 7,945,856)
Case IPR2015-01268 (Patent 7,181,690)
Case IPR2015-01269 (Patent 7,493,558)
Case IPR2015-01319 (Patent 8,082,501)
Case IPR2015-01321 (Patent 8,145,998)
Case IPR2015-01325 (Patent 8,145,998)
BEFORE: KARL D. EASTHOM, KERRY BEGLEY, and
JASON J. CHUNG, Administrative Patent Judges.
The above-entitled matter came on for hearing on Wednesday,
August 17, 2016, at 10:00 a.m., Hearing Room A, taken at the U.S. Patent
and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
REPORTED BY: RAYMOND G. BRYNTESON, RMR,
CRR, RDR
APPEARANCES:
ON BEHALF OF THE PETITIONER:

MICHAEL T. ROSATO, ESQ.
ANDREW S. BROWN, ESQ.
Wilson Sonsini Goodrich & Rosati, P.C.
701 Fifth Avenue, Suite 5100
Seattle, Washington 98104-7036
206-883-2500
MATTHEW A. ARGENTI, ESQ.
Wilson Sonsini Goodrich & Rosati, P.C.
650 Page Mill Road
Palo Alto, California 94304-1050
650-493-9300
ON BEHALF OF THE PATENT OWNER:

WAYNE HELGE, ESQ.
ALAN A. WRIGHT, ESQ.
Davidson Berquist Jackson & Gowdey, LLP
8300 Greensboro Drive
Suite 500
McLean, Virginia 22102
571-765-7700
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
P R O C E E D I N G S
(10:00 a.m.)
JUDGE CHUNG: Please be seated. This is the
hearing for IPR2015-01264, 01268, 01269, 01319, 01321 and
01325.
Who do we have for Petitioner?
MR. ROSATO: Thank you, Your Honor. Michael
Rosato for Petitioner. I have at counsel table with me
Mr. Argenti as well as Mr. Brown, who are both co-counsel in
10
this case.
11
12
JUDGE CHUNG: Who do we have for Patent

Owner?
13
MR. HELGE: Good morning, Your Honor. Wayne
14
Helge here for Patent Owner, Worlds Inc. At my table here I
15
have Alan Wright, who is not attorney of record, he will not
16
be presenting this morning, but he is here from my firm.
17
JUDGE CHUNG: Each side will have two and a
18
half hours to present their arguments. Petitioner can reserve
19
rebuttal time.
20
21
22
23
Would the Petitioner like to reserve any rebuttal

time?
MR. ROSATO: Yes, we would, Your Honor. I
will reserve an hour as of now.
24
JUDGE CHUNG: An hour rebuttal time?
25
MR. ROSATO: Yes.
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE CHUNG: Okay. At the conclusion of
Petitioner's presentation, not including their rebuttal time, we
will take a break for lunch.
At this time the Panel also respectfully requests
each party to speak clearly into the microphone. One of the
Panel me mbers is sitting remotely. And when discussing the
slides, please refer to the slide number and, last but not least,
I would like to introduce the Panel me mbers.
9
10
With me today are Judges Karl Easthom and Kerry

Begley, and myself, Jason Chung.
11
And I would also like to add that if any of the
12
parties would like to have -- would like to get up in the
13
middle of the presentation to use the facilities, please do so
14
quietly at around 11 o'clock to minimize disturbances.
15
At this time Petitioner may proceed.
16
MR. ARGENTI: May I approach?
17
JUDGE CHUNG: You ma y.
18
MR. ROSATO: As a housecleaning issue, Your
19
Honor, would the Panel prefer any objections made during the
20
hearing be held in reserve until the end or during the
21
presentation? I have had panels request the former, but just a
22
question.
23
JUDGE CHUNG: If I understand your question
24
correctly, you are asking whether or not to reserve objections
25
until the end or --
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. ROSATO: Exactly, just so counsel is not -- I
wouldn't want to interrupt counsel. I'm happy to wait until
the end of their speaking to note any objections that ma y
arise. If that's acceptable to the Panel, I will take that
approach.
6
7
JUDGE CHUNG: I would prefer not to have

objections during the proceedings.
8
9
MR. ROSATO: I would, too, Your Honor, but if

any come up.
10
JUDGE CHUNG: Okay.
11
MR. ROSATO: Okay. Well, as an initial matter
12
before we get started I just want to thank both the Panel and
13
the Patent Owner for their time today and throughout this
14
proceeding.
15
I'm going to be referring to the demonstrative
16
exhibits. And in order to try to address the issues, primarily
17
address the issues that are in dispute between the parties, I
18
ma y move among the slide deck and, Judge Begley, I will
19
make a point of referencing the slides so it is easy for you to
20
follow along.
21
I'm going to start with reference to slide 2. And
22
as everyone knows, there are five patents being challenged
23
here, six IPRs. The identification of those patents, the IPR
24
docket numbers and the corresponding instituted grounds of
25
challenge are presented in the slides at slides 2 through 6.
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
And as I indicated, there is some measure of
efficiency. There is a fair degree of overlap in the content,
the claim content and the issues in dispute, such that I plan to
address some particular items subject, of course, to questions
from the Panel.
The approach I'm going to take just for an
overview is first to provide a brief overview of the subject
matter of the patents and then briefly address the two primary
references of Funkhouser and Durward, and then move to
10
focus on the issues that appear to be primarily in dispute
11
between the parties.
12
These include addressing the meaning of the
13
so-called determining steps of the challenged claims, also
14
addressing the meaning of the claim term avatar, as well as
15
the different claim term three-dimensional avatar.
16
And we will have a discussion of how those
17
different claim constructions ma y affect the prior art
18
application, if at all. We will also address Patent Owner's
19
attempt to swear behind the Funkhouser reference.
20
And finally there is some miscellaneous issues that
21
will be addressed with regard to the dependent claims.
22
I will jump to slide 7, starting with a brief
23
overview of the challenged claims. Each of the challenged
24
patents shares an identical specification and each patent
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
issued from a continuation application following from a
common initial application.
As far as content is concerned, the patents are
directed to interaction between users in a virtual world. And
management of the data in that virtual world includes two
main aspects. First, a server process receives positional
information updates regarding users present in the virtual
world and sends positional updates to individual client
computers.
10
Second, as stated in the abstract of the patent, the
11
user can execute a client process to view the virtual world
12
from the perspective of the user. Such a view or perspective
13
is determined taking into account positional updates received
14
from the server. And such client processing can include, of
15
course, a field of view determination.
16
Slide 8.
17
JUDGE BEGLEY: Before you switch that slide, I
18
just have a question that relates to the field of view
19
determination.
20
In the patent at issue here, you haven't discussed N
21
and N prime yet, but if N and N prime are greater than the
22
avatars in a particular avatar's field of view, does the
23
rendering engine show only the avatars in the viewpoint of the
24
avatar?
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. ROSATO: So we are absolutely going to talk
about the claim c onstruction issue, Your Honor, with regard to
the determining step. And the construction that we advanced,
and we think is appropriate, is that the broad and generic term
of determining would encompass a field of view
determination. It would also encompass this N, N prime,
so-called client side crowd control.
8
9
10
11
I believe that that is -- I will have to go look at

that in the specification -- but I believe it is described as
separate from the field of view determination.
JUDGE BEGLEY: That wasn't the question,
12
though. If those variables N and N prime are higher than what
13
is in view, what does the rendering engine show?
14
What shows to the avatar? Is it N and N prime,
15
that many avatars, or is it only those that are in the field -- in
16
the viewpoint of the avatar?
17
18
19
20
21
MR. ROSATO: I see. So what shows is what is in

the viewpoint of the avatar.
JUDGE BEGLEY: Okay. Do you have any
support in the specification for that?
MR. ROSATO: I mean, I can look for it. I
22
reme mber the provision where the N, N prime e mbodiment is
23
discussed. It doesn't make sense that this pre-rendering, if it
24
is a pre-rendering step that, you know, a limitation of the
25
number of avatars that can be displayed is only -- it would
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
make sense that it would be separate from a pure field of view
determination.
3
4
But I would have to look at that disclosure. I will

take another look at it and follow up with that.
And my understanding, we will get to this, but to
follow-up on that, my understanding from the Patent Owner's
argument is that they are arguing that those two things are
separate. At the end of the day, our position is that both of
those processes would fall within the scope of the
10
determining.
11
So at the end of the day, I don't believe that the
12
distinction impacts our application of the prior art but,
13
nevertheless, I will take another look at that and make sure I
14
follow up with you on it.
15
JUDGE BEGLEY: Thank you.
16
MR. ROSATO: Okay. So we are on slide 8. And
17
this illustrates claim 1, which is a representative claim of the
18
'856 patent. And as is common with many of the claims of the
19
challenged patents, these claims recite the central concept of
20
the patents.
21
That central concept is represented by step A,
22
including the step of server filtering by which the server
23
filters information sent to a client so the client will receive
24
positional information on a subset of users in the virtual
25
world.
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
And then step B, which addresses determining
from the received positions what is then to be displayed to the
user. And this can be a client process.
I can move quickly through the remaining slides
addressing or illustrating some of the representative claims,
but briefly turning to slide 9, this illustrates claim 1 of the
'690 patent and illustrates that the subject matter is claimed in
a similar fashion with the two steps of server filtering, and
then step B of determining from the server filtered
10
11
information avatars that are to be displayed.

Slide 10. Claim 4 of the '558 patent represents the
12
same type of subject matter. Claim 4 is written as a
13
Beauregard style claim where the program includes similar
14
server filtering and client determining steps.
15
Turning be to slide 11, the remaining two patents
16
offer slight variations to the same theme. What is illustrated
17
here is claim 1 of the '501 patent. It includes a first step of
18
customizing the user's avatar, followed by the same central
19
concept that we see in the previous claims. That includes
20
server filtering, followed by determining from the received
21
positions user avatars that are to be displayed.
22
And then finally turning to slide 12, it illustrates
23
claim 1 of the '998 patent which offers a slightly different
24
spin on the same subject matter. There is receiving the server
25
filter information, generating a remote avatar on a graphic
10
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
display, and then further includes aspects of switching
rendering between a perspective of a remote user and a view
that allows the local user to view their avatar in a virtual
environment.
I would like to turn to slide 13. But following a
brief review of the claim subject matter what we see in the
prior art is that each of the challenged -- each of the aspects
of the challenged claims can be traced to the prior art. And
that is particularly true for the central concept that dominates
10
the subject matter claimed and, that is, server processing or
11
filtering followed by a client determination of what to
12
display.
13
So starting with the Funkhouser reference, this
14
was submitted as Exhibit 1005, and, very briefly, Funkhouser
15
describes a virtual world in which multiple users can navigate
16
the world and interact.
17
Just like the claimed subject matter, Funkhouser
18
discloses server-based filtering or culling followed by a
19
determination from the server-filtered information what is to
20
be displayed to the user.
21
Slide 14 briefly illustrates how the message
22
reduction is accomplished. It is accomplished in Funkhouser
23
by sending avatar update information only to workstations
24
with entities that can potentially perceive a change in
11
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
positional information or a change in the location of a remote
avatar.
As claimed in the Worlds' patents, Funkhouser
discloses server-based filtering where the Funkhouser system
filters distribution of positional update messages only to the
users to which the updates are potentially relevant, and then
upon receiving the server-filtered update information, the
client workstations process the updated messages and also
make a determination of which users should be displayed.
10
Turning to slide 15, I will briefly address the
11
Durward reference. This is the second primary reference that
12
is cited and relied on throughout the petition. And Durward,
13
like the claimed subject matter, addresses a 3-D virtual world
14
in which users interact.
15
And Durward discloses selective distribution and
16
updating of data for the purpose of reducing the bandwidth
17
processing requirements and more efficiently managing the
18
data.
19
As shown in slide 16, Durward discloses the same
20
type of server filtering as claimed in the various Worlds
21
patents. In particular Durward discloses that the users are
22
assigned a visual relevant space within the virtual world and
23
that relevant space is used to determine which state changes
24
are communicated to the user.
12
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
This is illustrated in figure 5 of Durward. It is
discussed in the petition materials and shown here as well.
Durward also discloses client processing in the
manner claimed in the various Worlds patents. In particular
Durward discloses the system displays a portion of the visual
relevant space viewed from the perspective of the virtual
being. And that includes other virtual beings and objects
within its perspective or field of vision.
Durward discloses that the field of view or vision
10
ma y be narrower than the relevant space, as illustrated in
11
figure 5, or it could be broader. So in sum both Funkhouser
12
and Durward disclose the primary concept that is central to
13
the Worlds patents.
14
I will turn to some of the issues that are
15
particularly in dispute between the parties, starting with slide
16
23. One of the central issues in dispute is the scope or
17
meaning of the so-called determining limitations of the
18
challenged claims. And some of those limitations are
19
illustrated here and certainly representative of what is at the
20
heart of the dispute.
21
'856, for example, claim 1 of '856 --
22
JUDGE CHUNG: Excuse me, counselor, before we
23
get into the claim construction, Patent Owner did file a
24
supplemental response indicating the expiration dates of the
25
patents.
13
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Are you in agreement with those expiration dates?
MR. ROSATO: I think those expiration dates are
3
4
correct.
JUDGE CHUNG: Okay, because there would be a
potential issue of whether or not we would be using the
Phillips standard versus broadest reasonable interpretation.
Okay. I just wanted to clarify that.
JUDGE BEGLEY: Sorry to interrupt.
JUDGE CHUNG: That's all right. Go ahead.
10
JUDGE BEGLEY: But I am not sure I am content
11
with that. You think that they are right. We need a little bit
12
more than that. We need a confirmation that you agree with
13
that and, if you don't, then you need to let us know because
14
the expiration dates are critical to your case.
15
16
17
MR. ROSATO: I don't challenge their stated

expiration dates.
As far as the claim construction standard, I would
18
add that at the end of the day, I don't think it matters which
19
construction standard is applied. The same outcome is
20
warranted in either case and our petitions were written in that
21
manner, specifically stating --
22
JUDGE BEGLEY: Sorry to interrupt again. Do
23
you dispute that if the patents do expire before the final
24
written decision is issued that we should be applying Phillips
25
instead of the BRI standard?
14
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
1
2
MR. ROSATO: I believe that is what the Federal

Circuit has told you, yes.
JUDGE BEGLEY: I was asking because there was
a statement in your brief about Patent Owner not filing a
motion that Phillips applies. So I wasn't sure whether that
was something you were disputing.
MR. ROSATO: Well, not -- okay. So the Board is
in control here in the sense of when the final written decision
comes out. So I want to be clear. As Petitioners we
10
recognize that. We have written and constructed our cases in
11
a manner such that it doesn't matter what claim construction
12
applies.
13
It is hard for me to say when the Board is going to
14
issue a final written decision because the dates of expiration
15
and the statutory period for issuing a final written decision
16
come in fairly close proximity.
17
We believe we have not restricted the Board or
18
made your job any more difficult. In fact, tried to make it
19
more streamlined by addressing both -- by proffering
20
constructions that would be applicable under either standard.
21
22
23
24
So at the end of the day, we just don't think it

matters. Okay?
JUDGE BEGLEY: I understand. We just need
your position as to when the patents are expiring and whether
15
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
that expiration impacts the standard. So you have given us
that so we have what we need. Thank you.
MR. ROSATO: Great.
JUDGE CHUNG: And while we are on the subject
of dates, we noticed that there is a provisional priority date
for these patents, and we were wondering what your position
is on whether or not those patents are entitled to the
provisional priority date with respect to the challenged
claims?
10
MR. ROSATO: If I reme mber correctly, we
11
assumed that they are entitled to that provisional date, and
12
that does, I think -- ma y I see a copy of the patent? I don't
13
believe that that affects the prior art application. Okay.
14
The one I'm looking at simply lists the
15
continuation, so let me at the intermission here look at the
16
exact priority claim and what we stated in our petition. But
17
my recollection is that we are assuming for prior art
18
application purposes that they are entitled to their earliest
19
priority date.
20
21
So we will take a look at that and confirm the

position on that. Okay?
22
JUDGE CHUNG: Thanks.
23
JUDGE BEGLEY: Just for your purposes of when
24
you are checking, again, I don't believe that an assumption is
16
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
enough, but that we need your position as to whether the
patents are entitled to the priority date.
MR. ROSATO: The provisional priority date?
JUDGE BEGLEY: Yes.
MR. ROSATO: Okay.
Okay. I was talking about the determining step
and the claim construction dispute. The construction for the
determining steps that was proposed in Bungie's petitions
were such that executing a client process to determine from
10
the user positions that are received from the server, other user
11
avatars located in the point of view of perspective of the first
12
user would fall within the scope of the determining step of
13
each of these claims.
14
Now, Patent Owner has challenged that
15
construction and in particular challenged whether such a field
16
of view determination would fall within the scope of the
17
claimed determining step. We certainly believe that the
18
proposed construction is supported for a number of reasons.
19
It is supported by a plain reading of the claims
20
and, that is, they simply recite generically that a
21
determination is made. There is no qualification in the claims
22
about crowd control or graphics pipelines or any type of
23
negative limitation regarding field of view determinations.
24
They simply generically recite determining a displayable set
25
or a set of other users' avatars.
17
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Looking at the specification of each of the patents,
there is no special definition or any definition that is
advanced in the specifications and there is nothing in the
specifications that indicates that field of view should be
excluded from a determination of what to display.
In fact, just the opposite. The abstract, for
example, states that "each user executes a client process to
view a virtual world from the perspective of that user." And
there is similar discussion throughout the specification.
10
To the extent there are embodiments that describe
11
ways to affect what gets displayed, such as the so-called N
12
prime crowd control embodiment, those embodiments are
13
examples. They are not exclusive disclosures of the
14
displaying step.
15
And that is something that has been expressly
16
acknowledged by the Patent Owner. That can be found, for
17
example, in the Patent Owner responses in footnote 7, for
18
example, of the 01268 case on page 17.
19
Slide 24.
20
JUDGE BEGLEY: Sorry, what does that footnote
21
22
say?
MR. ROSATO: The footnote states -- I can read it
23
in part -- it states: "Patent Owner does not contend that
24
selecting N prime avatars is the sole disclosed mechanism of
25
client side crowd control."
18
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
There is more to the quote there, but --
MR. ROSATO: Sure. So returning to slide 24,
looking at -- one of the issues to note with the Patent Owner's
proposed construction is that they advance their argument that
the determining step does not include a field of view
determination for only a subset of the patents.
8
9
Specifically they advance that argument in the

context of the '856 patent, the '690 patent, the '558 patent. It
10
is noteworthy that they don't advance that argument for the
11
'501 patent. Instead, in that, in the Patent Owner response
12
filed in that case, they simply say that no construction is
13
required and that Bungie's construction should be rejected.
14
If one looks at the claims that are presented in the
15
'501 patent, it is clear that those claims make more express
16
that a field of view determination falls within the scope of the
17
determining step.
18
Claim 1 of the '501 patent recites determining
19
from the received positions a set of other users' avatars that
20
are to be displayed to the first user, much like the determining
21
step in every other one of the patents that includes the step.
22
Claim 2 of the '501 further refines the determining
23
step by clarifying that wherein the step of determining
24
comprises filtering the other users' avatars based on the
25
orientation of the first user avatar.
19
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
So that is an orientation field of view
determination. That is in contrast and contradicts the
arguments that the Patent Owner has advanced that
determining is mutually exclusive to a field of view
determination.
Of course, the '856, '690, '558 and '501 patents all
share the identical specification. As such, claims should be
construed consistently across those patents.
Slide 25. Patent Owner also advances an argument
10
essentially stating that the determining step of the claims
11
must be performed in advance of the display, and that fact, as
12
it is argued by Patent Owner, would contradict or undermine
13
Bungie's proposed construction.
14
But that's not the case. Bungie's proposed
15
construction is not inconsistent with that argument. A client
16
can determine a set of avatars to display and then a client can
17
then display that set of avatars.
18
Dr. Zyda provided testimony along these lines, and
19
presumably in the event that a computer monitor becomes
20
unplugged, for example, the computer is still going to perform
21
a determination without displaying it. Once the monitor is
22
plugged in the display occurs. So this is not a real
23
meaningful distinction that's being advanced here.
24
25
The second aspect of this argument that Patent

Owner advances relates to the concept of a graphics pipeline.
20
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
This argument really also fails to make a meaningful
distinction. As I interpret the argument or as I understand it,
the Patent Owner is arguing that the act of displaying or the
display aspect is part of the graphics pipeline.
Their argument continues that a field of view
determination is also part of the graphics pipeline, and then
jumps to the conclusion that the entire graphics pipeline must,
therefore, be outside the scope of a determining step.
That doesn't actually make sense when one
10
considers what constitutes a graphics pipeline, including the
11
characterization provided by their expert. Mr. Pesce, he
12
testified that characterizing the -- sorry, I'm looking at the
13
slide here -- Mr. Pesce testified that even looking at this
14
concept of graphics pipeline, a field of view determination
15
would be the very first step of that multi-step process and the
16
display would be the very last step of that proc ess.
17
So there is no reason why different steps in a
18
rendering process or graphics pipeline or whatever you want
19
to call it, there is no reason and no requirement in the claims
20
that the entire process be treated as one continuous or single
21
unit.
22
So at the end of the day where does that leave us
23
with regard to the prior art that is being asserted? So with
24
regard to Funkhouser, the Funkhouser reference, the dispute
21
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
over whether Funkhouser discloses the determining steps is
entirely based on the claim construction dispute.
In other words, if the Board adopts Bungie's
construction, the Patent Owner does not dispute that
Funkhouser's disclosure of determining meets the claim
limitations.
Funkhouser also discloses the determining
limitations even under the Patent Owner's proposed
construction. In particular, Funkhouser discloses client
10
processing that takes place before the graphics pipeline and
11
impacts which remote users will be displayed by determining
12
their positions. This is the simulation that is discussed in
13
Funkhouser.
14
JUDGE BEGLEY: Does it just impact the -- sorry,
15
does it just impact which avatars will be displayed or does it
16
determine which avatars will be displayed?
17
MR. ROSATO: It determines their position or
18
simulates their position, and if a determination of what is
19
going to display it is based on positional information, then it
20
would in turn determine what is to be displayed. And that
21
simulation would occur prior to the so-called graphics
22
pipeline theory that Patent Owner advances.
23
So this was addressed, this disclosure of
24
Funkhouser was addressed in the petition. It was addressed in
25
detail in the Board's Institution Decision, and there was no
22
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
rebuttal to that point in Patent Owner's response. So it does
not -- it is not clear that they are contesting that.
With regard to Durward, again, the dispute over
whether Durward meets the determining step of the claims is
based entirely on the claim construction dispute. So, again,
like as with Funkhouser, if the Board adopts Bungie's
construction or rejects the distinction that Patent Owner
attempts to make, then there is really no dispute as to whether
Durward meets the determining steps of the claims.
10
I want to turn to slide 35 and address Patent
11
Owner's attempt to swear behind or antedate the Funkhouser
12
reference.
13
JUDGE BEGLEY: Before we leave the
14
determining step, for the 1264 case, the '856 patent, can you
15
address the Board's construction in the Institution Decision
16
which held that the determining step is broad enough to
17
include determining that takes place at the client, the server,
18
or both?
19
MR. ROSATO: Sure. So it is not an unreasonable
20
construction. The approach that we took in our petition, and
21
this also relates somewhat back to the question that was posed
22
to me regarding the different standards, we took a
23
conservative approach in proposing claim constructions,
24
essentially focusing on what -- the most conservative
23
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
construction that might be advanced for the claim, and that's
true with the '856.
So the Board is correct that step B doesn't
specifically require the client process to perform that step.
The Board was also correct that, whether the narrower
construction is applied or the broader construction that the
Board identified, it really doesn't -- it doesn't affect the prior
art application that Bungie had advanced.
So it was, you know, a good and astute observation
10
by the Board in the Institution Decision. I don't necessarily
11
think it is wrong, but it is not necessary to our prior art
12
position.
13
JUDGE BEGLEY: So you don't dispute it?
14
MR. ROSATO: Well, I know Patent Owner
15
disputes it. We are making a showing that, even if it is
16
performed on a client process, the prior art clearly discloses
17
that.
18
JUDGE BEGLEY: Okay.
19
MR. ROSATO: Turning to the issue of antedating
20
Funkhouser. Patent Owner has presented argument that they
21
invented the subject matter of the claims prior to the
22
publication of Funkhouser and presented an antedating effort
23
to that effect.
24
25
Their antedating effort is flawed and insufficient

for a number of reasons. And one of those reasons is the
24
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
simple fact that we're talking about conception of an invention
here and we don't have testimony from a single inventor on
this point.
That is obviously important considering the legal
definition of what it means to conceive of an invention, and,
that is, conception is defined as the formation in the mind of
the inventor of a definite and permanent idea.
8
9
So the concept of trying to corroborate what was

in the mind of a person without ever hearing from any of such
10
persons presents a very difficult and, in this case,
11
insurmountable hurdle or, stated differently, Patent Owner has
12
submitted allegedly corroborating evidence without any
13
corroboration from the witnesses themselves.
14
In this particular case we actually do know what at
15
least one of the inventors would say had that inventor been
16
called to testify in this case. And I'm referring to Mr. Ardon.
17
Mr. Ardon, who is listed as one of the inventors on each of
18
the challenged patents, during prosecution there is an attorney
19
declaration submitted because Mr. Ardon would not sign the
20
inventor declaration.
21
And Mr. Ardon had very particular reasons for
22
refusing to sign the inventor declaration. Those reasons
23
included his belief that the claims were merely reciting
24
subject matter that he knew was in the prior art.
25
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE BEGLEY: Was this declaration from
which -- sorry, which patent prosecution history was this
declaration filed in?
MR. ROSATO: So it is Exhibit 1048. Let me look
at that. I thought it was the '690 patent. Oh, it was in the
original '645 patent and then that -- '045, excuse me, and then
that declaration was subsequently filed in each of the
continuation applications.
JUDGE BEGLEY: So to be clear, this declaration
10
appears in the prosecution history of all of the patents at
11
issue?
12
MR. ROSATO: Correct.
13
14
MR. ROSATO: I see. So it is referred to in each
15
of the prosecution histories. The cases, the parent
16
continuation cases are also cited. The declaration itself does
17
not appear in its complete form in all of the prosecution
18
histories.
19
20
MR. ROSATO: So with that indication of
21
Mr. Ardon's perspective, combined with the fact that none of
22
the other witnesses were willing to appear or testify in this
23
particular proceeding, it is fair to infer that Patent Owner
24
would be unable to obtain useful testimony from any of the
26
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
other inventors and that they would reasonably share the same
perspective as Mr. Ardon.
Turning to slide 36, and just continuing on that
point, both the Federal Circuit as well as the Board has
recognized the difficulty in proving conception when there is
no inventor testimony.
There are a number of Federal Circuit cases and
Board cases that are cited in the briefing. One Board case of
note is the JDS Uniphase Corp. vs. Fiber case, that's
10
IPR2013-00336, and the Board directly addressed this type of
11
issue and identified or recognized the difficulty, if not
12
impossibility in that particular case, of corroborating the
13
content of the inventor's mind without the inventor testifying.
14
Let me turn to slide 37. So there is another issue
15
that presents in the antedating case as a threshold problem for
16
Patent Owner's antedating efforts. And that is the fact that
17
Patent Owner never attempted to map any of the claims to the
18
source code that they submitted that allegedly e mbodied some
19
functionality.
20
So this is obviously an action that the Patent
21
Owner should have taken if they are going to put forward an
22
antedating case, and it is not reasonable or fair to expect that
23
the patent -- that the Petitioner or the Board go through the
24
process of combing through and reading source code and
25
trying to line up source code to claim terminology.
27
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Also, it turns out, based on the testimony of Patent
Owner's witness, that it wouldn't be an easy matter, and it
doesn't appear that all of the claim elements are, in fact,
embodied in the source code that they submit. So there is no
claim mapping to the subject matter that has been submitted.
So the next issue, I'm going to turn to slide 38,
there are issues with what was submitted, even if we get to
that level. Patent Owner relies on this so-called RSRoom.cc
file, which was submitted as Exhibit 2035, to allegedly show
10
the server filtering that is recited in the Worlds patents.
11
There is a dating issue because -- starting with the
12
fact that the RSRoom.cc file itself is not dated. There is also
13
an issue that no witness could actually testify that this
14
particular code was the code that was in use prior to the
15
critical date, which is obviously important.
16
Not only is there no evidence that it was in place
17
prior to the critical date, the review of the evidence actually
18
indicates that the RSRoom.cc file, in fact, at best reflects
19
post-critical date code.
20
Turning to slide 39, Patent Owner also submitted a
21
CHANGELOG as Exhibit 2036. Slide 39 shows a clip from
22
the CHANGELOG file that was produced by Patent Owner
23
together with the RSRoom.cc file that we discussed.
24
Patent Owner relies on lines 39 through 41 for
25
arguing that the RSRoom.cc had a so-called crowd control
28
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
function as of April 11th, 1995. Recall that April 11th, 1995
is one day prior to the Funkhouser '95 publication date that
represents the critical date.
While Patent Owner points to the crowd control
feature, a few lines down on line 53 there is an indication that
the version of the code discussed was actually lost from
Worlds' version management server. There is no evidence that
the code was actually in use on this date and there is no
evidence that the code was used following that date.
10
JUDGE BEGLEY: Is there any evidence in the
11
record that might explain what "this version lost on grotto"
12
means?
13
MR. ROSATO: I mean, at face value it indicates
14
that it was lost. There is evidence of record, and we will
15
address some of that, where Mr. Pesce looked at that and
16
seemed to agree that the version was lost and certainly
17
confirmed that whatever was in existence prior to the critical
18
date was subsequently replaced with something else after the
19
critical date.
20
JUDGE BEGLEY: But what is grotto?
21
MR. ROSATO: I believe grotto is the server -- I
22
think it is the management server. I think there is some
23
discussion in some of the cross-examination testimony
24
regarding that. I can look for a reference for you in the break.
25
29
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. ROSATO: Okay. Turning to slide 40, these
are more entries from the CHANGELOG. I indicated that
there was evidence that whatever was in existence prior to the
critical date was subsequently changed or replaced with
something else. And these entries indicate that that is the
case.
JUDGE EASTHOM: Can I ask you a question?
I'm sorry, the grotto question, do the claims require -- is this
implying that this crowd control could be on a client and, if
10
11
that's true, how does that affect the analysis?

MR. ROSATO: That's a good question. I mean, it
12
is really hard to tell, because there is no claim mapping, it is
13
hard to tell how this maps up to the claim features.
14
My understanding of what Patent Owner is
15
asserting is that this, not grotto, but the so-called crowd
16
control feature at lines 39 and 41, the assertion is that would
17
fall within the scope of the server filtering step of the claims.
18
JUDGE EASTHOM: So it would have to be on the
19
20
server. Okay. I think I understand.

MR. ROSATO: Right, as the argument goes.
21
Now, this is one of our points of contention, is it is hard to
22
look at that -- well, we can't look at that because we have no
23
copy of the code that existed pre-critical date.
24
25
JUDGE EASTHOM: Assuming even it is lost on a

server, could it also imply that it existed at one point and, at
30
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
least in the mind of the inventor, it worked at some point, it
was conceived, even though it didn't work perfectly?
MR. ROSATO: Well, we don't know what was
conceived. I mean, this is why, one of the reasons why it is
so critical to hear from the inventors on this. I mean, if the
inventors -- I mean, the inventors could have been buying a
server and plugging into the wall and there could be a log of
that. That doesn't necessarily mea n the inventors perceived
that as their invention. Right?
10
So, likewise, we don't know if the inventors were
11
simply operating a server according to perfectly-known
12
technologies and had no belief that this was their invention, or
13
had a belief that this is a, you know, basically a 102(f)
14
situation where this is material somebody else came up with
15
and they are simply making use of it. We have no idea.
16
So we can't even -- not only can we not hear from
17
the inventors on what they thought, we can't even look at
18
the code and know what it contained and make our own
19
assessment. So it is really a black box.
20
JUDGE EASTHOM: Okay. Thank you.
21
MR. ROSATO: So turning to slide 40, and this
22
just illustrates further the point that there were subsequent
23
modifications to whatever coding was being developed at the
24
time post-critical date, and significant limitations, including
25
addition of things such as something called an absolute limit
31
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
on updates and then replacing the so-called brute-force search
that seemed to be mentioned in the pre-critical date entry that
we just saw on the previous slide.
So, Judge Easthom, this perhaps goes to a question
or a point you were making, that the pre-critical date entry
reference this brute-force thing, whatever that is. We have
got a post-critical date entry saying that that was replaced
with something else.
So the very thing that they seem to be relying on
10
pre-critical date turns out to have been replaced with
11
something else.
12
At the end of the day, and this really further
13
illustrates that whatever code may have existed prior to the
14
critical date, it was taken out, replaced, possibly lost, and
15
replaced with different code after the critical date. We don't
16
know what was pre-critical date so we ultimately can't make
17
that comparison.
18
Turning to slide 41, and this just further illustrates
19
the point, Patent Owner's expert when pressed during
20
cross-examination confirmed as much regarding the difference
21
in code. He confirmed that whatever form of server filtering
22
code may have been created or even implemented on April
23
11th, 1995 had been replaced by 1995.
24
JUDGE EASTHOM: I'm still trying to figure it
25
out, and, forgive me, I' m not -- I'm just trying to reme mber
32
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
my conception rule, but even if it does change, how does that
show that it still wasn't conceived if it is within the scope of
the claim?
4
5
MR. ROSATO: Well, we don't know what was

conceived.
JUDGE EASTHOM: So you are basically just
saying the change shows that we don't know what was
conceived?
MR. ROSATO: Right. I mean, what did they
10
believe was their invention? Was it something -- if you put
11
together or read this in light of Mr. Ardon's position that what
12
they were doing is just stuff that --
13
JUDGE EASTHOM: So you are not saying that an
14
improvement in the conceived invention vitiates whatever the
15
conception was prior to the critical date, are you?
16
MR. ROSATO: Necessarily I' m just saying we
17
don't know what was conceived. We don't know what was in
18
the mind of the inventors.
19
You might be able to show a CHANGELOG that
20
you were doing things, but like, you know, the example I
21
illustrated, if there is a log indicating that they bought a
22
server from, you know, the Best Buy server outlet and plugged
23
it in, that doesn't -- they were implementing a server.
24
25
That doesn't necessarily mean they can write a

server claim and say, ha, see, we operated a server. The
33
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
details are just lacking. We don't know what the content of
the pre-critical date code was. We don't know what the
inventors perceived as their invention if really anything.
So just, you know, writing these broad claims and
going back and saying, see, we had a server and it did things,
we don't know what it was and we don't know what the
inventors thought about it, that doesn't -- that's not an
antedating case.
JUDGE EASTHOM: So just basically this
10
evidence post the critical date is your way of showing that
11
whatever was pre the critical date just isn't clear?
12
13
MR. ROSATO: It is not of record. We have no

idea what it is.
14
JUDGE EASTHOM: Okay.
15
MR. ROSATO: And what they specifically rely
16
on, they are pointing to code, some code file and saying here
17
are things that illustrate that we invented this, but that code
18
they are pointing to is post-critical date code. Right?
19
So even if we were to follow along and assume
20
that there is some invention embodied in that code, we don't
21
know if that invention was something that was conceived
22
post-critical date. Right? We just don't know what it is.
23
So this is, you know, this stuff is so amorphous
24
and undefined that it really doesn't substantiate anything.
25
And when we get into 102(g) versus 102(f) that's a distinction
34
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
that we are unable to make or -- I should say just 102(f),
different aspects of, you know, prior art under 102, we don't
know if some of these aspects were things that Mr. Ardon read
in the art and said that we're trying to build a server system
and we're going to take the approach that we read about from,
you know, the Durward reference or wherever.
And, you know, for me to look at the record and
take it for what it fairly suggests, that's what it is suggesting,
that the inventors believed they were making use of prior art
10
approaches. If there are things pre-critical date and no
11
inventor testimony, the law actually indicates that the
12
inference should be against the Patent Owner or the antedating
13
party on that.
14
Turning to slide 42, this just is further illustrating
15
the point. I mentioned earlier that the RSRoom.cc file itself
16
was not dated. The CHANGELOG indicates that files were
17
named with this RS prefix, like RSRoom.cc sometime in 1996.
18
This is indicated, for example, at line 418 of the
19
CHANGELOG.
20
And whether named or renamed this just presents
21
another disconnect between the RSRoom.cc code Patent
22
Owner had submitted and whatever may have existed prior to
23
the critical date.
24
25
So in sum, for the antedating effort that we are

looking at here, we have no inventor testimony. We have no
35
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
mapping of the evidence submitted to any of the claims. We
have no indication of what the pre-critical date code
contained. We have no copy of the pre-critical date code.
And we ultimately just don't know what that code contained.
JUDGE BEGLEY: Can you address Patent
Owner's alternative theory for antedating Funkhouser that it
was conceived earlier than April 11th but then reduced to
practice by the time that it was released at the end of April,
April 25th of 1995?
10
MR. ROSATO: Sure. And I struggle to determine
11
whether that was actually presented as an alternate theory in
12
their briefing, but assuming that it was, there is still a
13
conception issue here, right, whether it is a conception and
14
actual reduction to practice theory or a conception and
15
post-critical date reduction to practice, thereby requiring a
16
showing of diligence.
17
Either way, there is a requirement that conception
18
be established, and that simply has not been established. We
19
actually have -- the only evidence or indication of testimony
20
from the inventors is what we saw from Mr. Ardon's input,
21
that he didn't believe that what was in the Worlds patents was
22
new subject matter. He believed that to be subject matter that
23
he knew was in the prior art. So either way, under either
24
theory, conception is a problem.
36
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
There is also the diligence issue -- well, there is a
reduction to practice issue, what was ultimately reduced to
practice and how does that line up with conception. There is
also a diligence issue. There is a lot of time between the
purported conception and the diligence and we don't see these
day-to-day requirements.
Looking at interference law, which is the context
in which this type of showing typically arises, diligence is a
very high threshold or high burden to meet. You have to show
10
diligence on virtually a daily basis, and there is just not the
11
requisite diligence here if that's their theory.
12
I'm going to turn to slide 26. Just for time
13
management purposes, do we know where we are in terms of
14
expired time? Roughly an hour?
15
16
17
JUDGE CHUNG: We have about 29 minutes,

because you reserved one hour for rebuttal time.
MR. ROSATO: Okay. Thank you. So let me talk
18
about the avatar limitation. So this is one of the other claim
19
construction issues that is in dispute.
20
A few of the challenged claims recite the term
21
three-dimensional avatar. Other claims, and most of them
22
simply recite the term avatar, a different term.
23
Patent Owner argues that all of the recitations of
24
avatar should be construed as three-dimensional whether they
25
chose to actually recite the language three-dimensional or not.
37
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
The construction Bungie proposed in their petitions was that
avatars should be construed as a graphical representation of a
user.
While Bungie's construction is the correct one, as
we will address, at the end of the day the prior art applies no
matter what construction is adopted. That is always a point
we like to make clear with these claim construction disputes,
is whether they actually matter. And we don't think this one
at the end of the day matters.
10
So slide 27, please.
11
JUDGE CHUNG: Excuse me, counselor. Can we
12
go back to slide 26?
13
MR. ROSATO: Sure.
14
JUDGE CHUNG: I believe the '998 patent also
15
recites three-dimensional avatar and it is not indicated here,
16
at least in claim 2, independent claim.
17
18
19
20
21
MR. ROSATO: I think that is correct, Your

Honor.
JUDGE CHUNG: And independent claim 18 and
independent claim 19?
MR. ROSATO: Uh-huh. Yes, this is not meant --
22
slide 26 is not meant to be an exhaustive list, more to
23
illustrate that some claims recite the term avatar, others recite
24
the term three-dimensional avatar, but Your Honor is correct
25
that this is not an exhaustive list of the claims.
38
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
1
2
3
JUDGE CHUNG: Okay. I just wanted to clarify

that.
MR. ROSATO: Thank you. Okay. So looking at
slide 27, there is a clear indication that if, when we are
looking at the claims, if the Patent Owner wanted to recite the
term three-dimensional avatar they could have done so, and
they did do so in some instances but not all of the instances.
So the question then arises whether the
specification sets any restrictions or special definition for the
10
term avatar? And the answer is that it does not.
11
The Patent Owner cites to an example in the
12
specification, but that example does not amount to some
13
special definition or express definition or recitation that
14
whenever the term avatar is mentioned it must be defined as a
15
three-dimensional avatar.
16
JUDGE BEGLEY: Is your position that the
17
ordinary meaning of avatar in November of 1995 included
18
both two-dimensional and three-dimensional virtual beings?
19
MR. ROSATO: Our position is that it required a
20
graphical representation. It doesn't necessarily have -- in the
21
context of this patent where you clearly can choose to write
22
three-dimensional, if you wanted to be in three-dimensional
23
you can say that.
24
25
If you just -- given the difference between

terminology that presents in claims, the Patent Owner's choice
39
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
to represent terms, different terms differently reflects on what
the plain and ordinary meaning would be.
I mean, it has to be in the context of a
specification in the patents in addition to the plain and
ordinary meaning or the customar y meaning at the time.
JUDGE CHUNG: So your position is that the
differentiation between the term avatar, alone by itself, in
isolation, versus three-dimensional avatar, indicates that
three-dimensional is not to be imported into the definition of
10
avatar?
11
MR. ROSATO: Correct.
12
JUDGE BEGLEY: Do you have a position that,
13
without that distinction in the claims, whether avatar at the
14
time of these patents included two-dimensional or
15
three-dimensional?
16
MR. ROSATO: We submit a dictionary definition
17
from the Microsoft Computer Dictionary that simply recites
18
avatar as a graphical representation of a user.
19
If that's an indication of what the plain and
20
ordinary meaning is, there is no specific requirement in the
21
dictionary definition that it include, necessarily include
22
three-dimensional. That, of course, is extrinsic evidence.
23
24
And as we discussed and Judge Chung pointed out,

we would begin with the intrinsic evidence, look at how it is
40
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
recited in the claims and what is contained in the specification
in view of that in the context of the Worlds patents.
If they want to say three-dimensional they can say
three-dimensional and in many instances they chose not to do
that.
JUDGE EASTHOM: How do we reconcile the
District Court's construction that, as I understand it, they did
find a three-dime nsional requirement? Was the evidence
different or was it a different claim construction or how does
10
11
that play out for us?

MR. ROSATO: Fair question, Your Honor. I can't
12
explain the District Court's claim construction on that point,
13
to be perfectly frank. I don't know what to tell you other than
14
that. It was perplexing to me.
15
JUDGE EASTHOM: Okay. Thank you.
16
JUDGE CHUNG: Wasn't that -- the '998 patent, in
17
column 3 it does say -- column 3, lines 25 through 26, it says
18
each avatar 18 is a three-dimensional figure chosen by the
19
user to represent the user in a virtual world.
20
And I understand your position to be that column
21
3, line 12, says figure 1 is an example of what such a client
22
might display. So it is merely an example embodiment. It is
23
not the definition -- it is not a per se definition.
24
25
How do you respond to the brief description of the

drawings in column 2, line 58 and 59, saying that figure 1 is
41
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
applying screen view in a virtual world according to the
present invention?
3
4
5
6
7
8
MR. ROSATO: So you are looking at, just to be

clear, looking at the '690, is that correct?
JUDGE CHUNG: Any of the patents, the brief
description in the drawings, to make it easier for you.
MR. ROSATO: Okay. Figure 1 is a screen view
in a virtual world according to the present invention.
JUDGE CHUNG: I understand that and sometimes
10
it says that it is an example. But here it says according to the
11
present invention. I just wanted your -- how you reconcile
12
that inconsistency?
13
MR. ROSATO: I thought there was another
14
statement, for example, at the end of the specification that
15
clarifies that any of the above descriptions are illustrative and
16
not restrictive. And that --
17
JUDGE CHUNG: Is that column 15?
18
MR. ROSATO: I am looking at the '690 patent,
19
for example, column 16 there, starting at line 9. The Patent
20
Owner there has chosen to make clear that any of its
21
descriptions or examples are to be read as nonlimiting and not
22
restrictive but me rely illustrative, and further clarifies that
23
the scope of the invention, in any case, should be determined
24
not with reference to the above description but, instead,
25
should be determined with reference to the claims.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
So this brings us back to the very issue that we
had touched on earlier, and that is how has the Patent Owner
chosen to define their invention in the claims? And we see
that in some instances they chose to write three-dimensional
avatar and in other instances they chose to simply state avatar.
Those different claims must mean different things under
principles of claim construction.
8
9
There is a minor point that goes to all of this, and

that is illustrated by the disclosure identified here on slide 27.
10
And this gets to a little bit more detail on how the patent is
11
defining even what they call the three-dimensional avatar.
12
And they defined such an avatar as comprising N, number, of
13
two-dimensional panels, and then clarify that the i-th panel is
14
the view of the avatar from the viewing angle.
15
In other words, an avatar is constructed of a
16
plurality of two-dimensional panels, and when presented to
17
view by the user, the user sees one of the panels. So it is an
18
interesting way to present a three-dimensional avatar.
19
It is also something that Mr. Pesce had described
20
as -- he referred to it as a quasi-three-dimensional
21
representation. So this bifurcation of two-dimensional versus
22
three-dimensional is not entirely such a bright line distinction
23
in the context of this art, of this patent, and the existing prior
24
art.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
For example, Mr. Pesce at paragraph 40 of his
declaration talks about a product or a video game that existed
at the time referred to as the Wolfenstein 3-D game that
employed the very sa me rendering technique.
JUDGE EASTHOM: So if I understand, well,
obviously everything is in two dimensions when it is on the
screen, but are you saying that in this patent, in this
disclosure that you describe on slide 27, that the way the 3-D
effect is obtained is by just presenting one panel and then
10
giving another panel so it looks like a rotation, for example?
11
Am I understanding that?
12
MR. ROSATO: I think that's my understanding of
13
the description. Like, I mean, if you think of a really basic
14
example of rendering, and I will give a two-dimensional
15
system example, and that's Pac-Man, right, so Pac-Man is
16
two-dimensional going one way, the different imaging going
17
any of the four directions, and there is also the opening and
18
closing of the Pac-Man mouth, but the point is, based on
19
directionality, you get a different two-dimensional image.
20
And this looks to be just a logical extension of
21
that approach, where a being may b e in a three-dime nsional
22
world and, rather than simply four versions of Pac-Man, up,
23
down, left and right, you have different variations to that, so
24
you get different angles on an image as it changes orientation.
44
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
1
2
JUDGE EASTHOM: So you might get a side view

of the penguin and then a front view after that?
MR. ROSATO: Right.
MR. ROSATO: Right. And that's exactly the
approach that is described and Mr. Pesce identified in the
Wolfenstein 3-D game that he indicated was released in, I
think, late 1992, that this was referred to -- this is a known
rendering technique, and he referred to them as using
10
11
mathematical cheats to create a three-dimensional appearance.

Let's turn to slide 28. I don't want to spend too
12
terribly much time on this, absent questions to the contrary,
13
but just to point out, as stated in the briefing, one of the
14
central arguments to Patent Owner's position and Mr. Pesce's
15
supporting testimony about how to construe avatar is this
16
story that the state of the art was in a state in 1992 where any
17
time anyone looked at a piece of prior art they would
18
understand it to be two-dimensional and only
19
two-dimensional.
20
As the story goes, the state of the art changed so
21
drastically in three years that the default, any time avatar was
22
mentioned, the default was that it must, absolutely must be
23
three-dimensional.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
This is a story of convenience based on the prior
art of Durward, having a 1992 publication date, and the
Worlds patent having the earliest priority date in 1995.
That aside, the story more importantly simply
lacks evidence, corroboration, and there is a large amount of
inconsistent testimony on this point. So the Board is certainly
capable of evaluating that and weighing it accordingly but we
wanted to just emphasize the lack of corroborating evidence
surrounding that and the inconsistency.
10
Turning to slide 29, and we touched on this
11
already, based on Judge Begley's questions, what does the
12
extrinsic evidence have to say about the term avatar? And
13
this is a -- this slide illustrates a copy of the Microsoft 1997
14
Computer Dictionary. This was submitted, of record, and the
15
extrinsic evidence indicates that the definition does not
16
necessarily require three-dimensionality as has been suggested
17
by the Patent Owner.
18
Turn to slide 30. So, finally, I led this discussion
19
by indicating that at the end of the day it doesn't really matter
20
whether avatar is construed to be three-dimensional or
21
two-dimensional, that the prior art applies no matter what.
22
And this is true. There is no dispute that
23
Funkhouser discloses three-dimensional --
24
three-dimensionality in their avatars. And with regard to the
46
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Durward reference, contrary to the Patent Owner's argument,
Durward also discloses three-dimensional avatars.
In particular Durward discloses a
three-dimensional virtual space and, as Dr. Zyda testifies,
reviewing the content of the description and letting logic
dictate, that unless stated otherwise the objects in this
three-dimensional space are, of course, going to be
three-dimensional.
And this is also consistent with the discussion
10
throughout Durward, and that includes the discussion of
11
object movement. Durward describes the desire to mirror the
12
three-dimensional movement of users in the real world
13
through movements of the corresponding virtual beings.
14
So it simply wouldn't make sense to view Durward
15
as having two-dimensional representations in what they
16
describe as a three-dimensional world and given the effect
17
that they are seeking to obtain.
18
JUDGE BEGLEY: Is that testimony that you have
19
quoted there, paragraph 167, is that included in the record of
20
any of the cases other than the 1319 case, I believe, the case
21
with the three-dimensional avatars explicitly recited?
22
MR. ROSATO: I believe that Patent Owner
23
actually quotes it in each of their reply -- I'm sorry, in each of
24
their Patent Owner responses. I think that they proactively try
25
to address that.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
So it is interesting. In the original petition
materials this was -- Dr. Zyda's testimony was submitted in
order to address the instances where the term
three-dimensional avatar was specifically recited.
It wasn't believed that the more generic term
avatar required additional, this type of additional discussion.
So I don't believe that his declaration submitted in those
petitions actually go that next step.
Nevertheless, Patent Owner chose to
10
cross-reference those citations or that discussion that is shown
11
in the slide in its Patent Owner response. So the testimony
12
was acknowledged and made of record in that capacity.
13
JUDGE EASTHOM: I guess, you know, your
14
position is, with respect to the patents, those could be 2-D
15
avatars within a 3-D world. So why wouldn't that sort of
16
analysis apply to this disclosure?
17
In other words, even though you are emulating
18
users' legs, arms and fingers, couldn't that be describing
19
two-dimensional movement in a three-dimensional world?
20
MR. ROSATO: Fair question. Interpretation of a
21
portion of disclosure is obviously a different exercise than
22
interpreting the scope of a claim. But looking at the Worlds'
23
claims you don't have that -- in many instances you don't have
24
the same contextual situation.
25
A lot of their claims mention --
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE EASTHOM: No, assuming, for example,
that there is a distinction between the claim term avatar and
3-D avatar.
So with respect to 3-D avatar, that is required by
the claim, but your position is that, well, the patents disclose
avatar or 3-D avatars, the patents under review, because
basically a 2-D object could be encompassed within their
patent, and it's also disclosed that a 2-D object could be in the
3-D world, so why isn't that the same thing that's going on
10
here with Durward? Or maybe I asked the same question. I
11
don't know if that clarifies anything.
12
MR. ROSATO: No, it's an excellent question. I
13
understand where you are going. So a couple points of
14
clarification.
15
It is not necessary that, on the claim construction
16
issue, it is not even necessary to go as far as two-dimensional.
17
We honestly don't care whether the claims encompass
18
two-dimensional.
19
We think obviously the prior art discloses
20
three-dimensional but, as we pointed out in regard to the
21
embodiment that has the multiple two-dimensional panels,
22
there is not this easy distinction or bright line between
23
two-dimensional and three-dimensional.
24
25
If we look at what is described in the patent

specification you can't -- it doesn't provide an easy out in
49
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
terms of claim construction to say, well, we don't have, you
know, a bright line between two-dimensional and
three-dimensional in our specification, but we are going to
apply a bright, some sort of bright line to the art.
JUDGE EASTHOM: I understand your answer.
Okay. I understand. So you are saying that this disclosure,
whatever it is, is similar to their disclosure and so 2-D is 2-D
or 3-D is 3-D, it's the same?
MR. ROSATO: Yeah, in the state of the art at the
10
time it admittedly included things like the multiple
11
two-dimensional panels to make, you know, mathematical
12
cheats for a 3-D representation. So there is no bright line that
13
should be applied.
14
15
16
17
18
JUDGE EASTHOM: Did you argue this lack of a

bright line in your reply brief or anywhere?
MR. ROSATO: Let's see. I don't think I used the
term bright line.
JUDGE EASTHOM: Not in that word, I
19
understand, but is that concept somewhere in the -- or is this
20
sort of a shift?
21
MR. ROSATO: No, it is not a shift. I know that
22
we pointed out the two-dimensional panel issue. I know we
23
pointed out the -- Mr. Pesce's reference to the Wolfenstein
24
3-D and that there was not such a clear distinction.
25
50
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
1
2
MR. ROSATO: Exact verbiage with the -obviously if we had more time.
3
4
JUDGE EASTHOM: That's fine. I just want to try

to keep it straight. We will look into the record.
MR. ROSATO: Understood. Okay. The other
thing I wanted to point out to that point, though, is in terms of
context. When you are looking at Durward, for example, and
in one paragraph it is talking about a three-dimensional world
and the movement within that three-dimensional world.
10
JUDGE CHUNG: Counselor, you have five
11
minutes.
12
MR. ROSATO: Okay, great. So that's something
13
to keep in mind when looking at the claims, as many of the
14
claims don't similarly set such a context. Many claims just
15
mention a virtual world. Okay.
16
So with five minutes I am going to be selective on
17
what I finally address. Well, let me turn to slide 33. This
18
hits probably the biggest crop of issues.
19
A number of the claims require some sort of
20
perspective switching, that is, changing a point of view that is
21
displayed or a different concept of teleporting, that is,
22
allowing the user to instantaneously move from one location
23
to another.
24
25
And for reference, the Wexelblat references cited

and relied upon for teleportation, that is illustrated at slide
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
19 -- you don't have to change that -- the Marathon reference,
as well as the Tracey reference are cited for this aspect,
among other things, but for this aspect of perspective
switching. And Marathon and Tracey are addressed in the
demonstrative exhibits at slides 21 and 22, respectively.
So I just want to address -- there is a common
rebuttal that Patent Owner has advanced to the combination,
the art combinations that bring in these art known approaches
of perspective switching and teleportation.
10
But the common argument that Patent Owner
11
advances is that the combination would lack a rationale to
12
combine on the basis that the network speeds of the Worlds
13
patents, if these techniques were applied, under those network
14
speeds that would result in some sort of unacceptable delay or
15
lag.
16
And that is an argument, while interesting, was
17
rebutted pretty clearly in the record. And I just want to draw
18
attention to a few points on that.
19
One reason why this argument falls apart is based
20
on the starting assumptions themselves being faulty. Those
21
starting assumptions are the network speed calculation. So
22
their expert, Mr. Pesce, reached his conclusion on the premise
23
that you would start with a 14.4 kilobit network speed because
24
that's what was recited in the Worlds patent. Now, this
25
doesn't make sense for a number of reasons.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
One, there is no requirement in any of the claims
that negatively limits lag or some delay. So there is no claim
requirement that says that you can't have some sort of lag or
delay.
Also, based on the disclosure in the Worlds
patents, there is no reason why, if such a lag were to present,
why that wouldn't also present in the context of the Wor lds
patents. There is no technical solution presented there to
limit lag or delay.
10
So absent restriction in the claim, the same issues
11
would present and, therefore, presumably be encompassed
12
within the claims even to the extent lag existed.
13
Turning to slide 34, in any event, the asserted
14
prior art that was used generally used networks, as it turns
15
out, that were much faster than the dialup network mentioned
16
in the Worlds patents.
17
For example, Mr. Pesce testified that the
18
Funkhouser reference actually used a network with speeds of
19
around two megabits per second, which is about 140 times
20
faster than the 14.4 kilobits per second disclosed in the
21
Worlds patents.
22
And he was asked if he had considered that higher
23
speed disclosed in the prior art in making his calculations, and
24
he indicated he had not. So there are a couple of reasons why
25
that argument just does not hold water.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE CHUNG: Counselor, your time is up.
MR. ROSATO: Thank you.
JUDGE BEGLEY: I have one last question. For
the Funkhouser and Funkhouser '93 obviousness combination,
can you explain how Funkhouser '93 teaches determining a
maximu m number of objects as opposed to just omitting
objects?
8
9
MR. ROSATO: Sure. So it is an excellent

question and one of the obviously more interesting issues
10
presented here. But we agree that Funkhouser '93 does teach
11
omitting objects, and that was the heart of Patent Owner's
12
challenge to Funkhouser '93. They were actually arguing that
13
it was an omission of texture, not objects.
14
I just want to make that clear. That is an
15
unsubstantiated argument and contradicted by the very
16
disclosure of Funkhouser itself. So Funkhouser '93 does teach
17
the omission of objects.
18
As far as the maximu m number, I would say that
19
Patent Owner's argument seems to rest on this assumption that
20
the claims require something that is not recited in those
21
claims. In other words, they tend to treat this maximu m
22
number limitation as if it requires some direct input or
23
specific number limitation like, you know, maximum number
24
of five, don't exceed that.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
That's not necessarily a requirement of the claim.
And what Funkhouser '93 permits is that objects can be
displayed based on a number of parameters and
algorithmically based on values of the objects, available
computing resources, the desired frame rate, and then omitting
anything beyond the maximum that is defined by those
parameters.
8
9
So I would say that Funkhouser '93 defines a

maximu m algorithmically based on a number of parameters
10
that are enumerated and that that falls within the scope of the
11
claims as the claim does not require a specific identification
12
of a maximu m number in some sort of direct input capacity.
13
Does that answer your question, Your Honor?
14
JUDGE BEGLEY: Yes. Thank you.
15
JUDGE CHUNG: At this time we will have
16
approximately a one-hour break and we will reconvene here at
17
around 12:35 and begin with Patent Owner's presentation. We
18
are adjourned for a break. Off the record, please.
19
20
(Whereupon, at 11:33 a.m., a lunch recess was

taken.)
55
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
AFTERNOON SESSION
(12:36 p.m.)
JUDGE CHUNG: Please be seated. At this time
Patent Owner will have two and a half hours to present their
arguments.
MR. HELGE: Thank you, Your Honor. May it
please the Board. This morning we heard Bungie talk about
the prior art and the scope of the claims and, of course, that is
part of the case, but this case is also about a company that
10
was formed in the mid-1990s with the purpose of bringing
11
virtual reality to home users, to education, to hospitals.
12
Now, as Dr. Zyda testified, virtual reality was
13
available to the military. It was very expensive. You were
14
required to have high-end workstations, fairly fast network
15
connections. And in truth, in the mid-1990s, sometimes it is
16
hard to recall back to that time, those features weren't
17
necessarily available to the home user.
18
Some users might have a 286 computer, some
19
might have a 386. There were different levels. There were
20
different levels of Internet accessibility.
21
The problem of bringing virtual reality to that
22
home user was essentially one very much of capacity, of
23
capability of the equipment. Now, Worlds took an interesting
24
view, a novel view, frankly, of how to deal with the problem
25
of getting all that data onto a home computer and get that data
56
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
processed so it creates not just a virtual experience but a
virtual reality experience.
Now, virtual reality at its heart is about bringing
people together. It is about bringing different users, people
who are in different parts of the world, perhaps, different
parts of the country, sick children in hospitals who can't get
to other locations, it is about bringing them together into a
virtual space.
Now, what was interesting about Worlds is they
10
did something that is actually a little bit counterintuitive.
11
They said, within your field of view, even though virtual
12
reality is about bringing people into this space, we're going to
13
exclude some of these people. And that's how we are going to
14
get this done. That's how we are going to bring this concept
15
to the home user.
16
Now, I will tell you that there is not a single piece
17
of prior art before you today or before you in any of these
18
cases that takes the process of looking at a field of view and
19
removing avatars from within that field of view.
20
Now, Bungie has come forward with the Schneider
21
reference and the Funkhouser '93 reference. But I will tell
22
you that neither one of those look at a field of view for a user
23
and remove avatars out of that field of view for any reason.
24
25
And that's what Worlds brought to the table. That

was a solution to the problem of getting virtual reality down
57
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
to a user with perhaps not a high-end workstation with a high
network connection.
Now, there are a number of claims at issue that
very clearly directly go to this idea of getting rid of other
avatars that are within the field of view. And I'm going to
refer to those generally as maximum number of claims. And I
will go through which claims those are specifically.
Now, there are another set of claims -- excuse me,
about those maximu m number of claims, I would just like to
10
point out that, regardless of how this case turns out, on any
11
other claims, those maximu m number of claims must survive
12
because none of the prior art discloses those features.
13
Now, there are other sets of claims that I will refer
14
to generally as the determining claims, and those are -- Mr.
15
Rosato referred to them generally to some degree. Again, I
16
will explain which ones those are as well. We believe that
17
those determining claims, with one exception that I will point
18
out, and that's the '501 patent claim 1, we believe that at least
19
the determining claims in the '856 patent, the '690 patent and
20
the '558 patent get to that same concept of removing avatars
21
that are within a user's field of view.
22
Bungie disagrees, of course. Ultimately there is a
23
very clear issue of claim construction that we need to sort out
24
and I will be dealing with that as well. Now, there is a third
25
category of claims, and, again, Mr. Rosato has already talked
58
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
a little bit about these, and that's the claims where there is a
drastic perspective change or a teleporting change, a
teleportation of the avatar from one location into the other.
And we will deal with those as a whole as well.
Of course we have to deal with the proper claim construction
of avatar, and I will mention as well, I will discuss the
suitability or availability of Funkhouser '95 as prior art to
certain claims.
So coming back to our main point, Your Honors,
10
there is not a single piece of prior art that is before you today
11
where there is a removal or a filtering of avatars from within
12
a user's field of view. And this is clearly captured in the
13
maximu m number of claims.
14
Now, as we talk about the maximum number of
15
claims, and actually as we talk about a number of different
16
claims today, I would like to propose an analogy for the
17
obviousness determination, because here we stand dealing
18
with this question of whether the maximu m number of claims
19
are rendered obvious in view of a combination of references.
20
I think obviousness can be looked at as a river or a
21
stream, with one bank on one side as the prior art and the
22
other bank as the invention, and here the Worlds claims.
23
Now, in some instances that stream or that river is very small.
24
It is just a trickle. So a person of ordinary skill in the art can
25
simply step from one bank to the other.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
But that's not the case we have here. We have a
much bigger stream that we have to cross. And when you
think about how you get across, how the person of ordinary
skill in the art gets from the first bank to the second bank,
when you are looking at it from the side of the prior art bank,
which is the proper perspective, you have a series of stepping
stones.
Now, some stones don't have a strong foundation.
Some stones lead to a dead end and you can't get anywhere.
10
But there may be a path on a select set of stones to get you
11
from the prior art bank to the invention bank.
12
There is also a problem with hindsight. When you
13
are on the second bank, when you are on the invention bank,
14
looking back at the prior art, it is easy to say, well, this is the
15
correct path. A lot of these stones have been washed away.
16
We can clearly pick out the dead ends from here.
17
And so while we have been cautioned by the
18
Federal Circuit, by the Supreme Court, in KSR, Graham v.
19
John Deere, and most recently by the Federal Circuit in the
20
Arendi v. Apple case, hindsight is a dangerous thing and we
21
have to be careful against that.
22
And all of these discussions of obviousness are
23
relevant to what Bungie has said about the obviousness of the
24
maximu m number of claims. So I am going to jump ahead in
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
my slides, my demonstratives, to slide 27, and I will begin
here.
Slide 27 shows from the '690 patent claim 1 and
claim 4 and the relationship between these two claims. You
can see in claim 1 you have step B, the determining step,
which we will discuss a bit later about what is meant by
determining. But you also see when you get to claim 4 there
is a discussion of wherein step 1(b) comprises, and then we
get the sub-elements of that determining step.
10
So, for example, at the very bottom of the slide
11
you see step B from claim 1, determining from the received
12
positions a set of the other users' avatars that are to be
13
displayed to the first user, and step (b)(2) from claim 4,
14
determining a maximu m number of the other users' avatars to
15
be displayed.
16
On slide 28 --
17
JUDGE BEGLEY: Sorry, before you, counsel,
18
before you switch slides, you just said previously that the
19
maximu m number of claims involve filtering out avatars from
20
the field of view.
21
How do you reach that from this claim language?
22
It doesn't say anything about a field of view, so how does it
23
involve filtering beyond the field of view?
24
25
MR. HELGE: Your Honor, what we have here, we

have the received positions from the server in (b)(1). We
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
have determining a maximu m number of the other users'
avatars to be displayed. Step 3, the comparing of the two, and
that they are to be displayed.
And so I would say -- in other words, we go back
to the crowd control discussion in the specification. We have
a determination of N at the server. We have a determination
of N prime at the client. N prime can be less than N. And so
here we get to the idea specifically that we do have a
maximu m number that are to be displayed.
10
Now, I think I see where Your Honor is going in
11
that it doesn't actually call out a field of view. But in terms
12
of the max number that can go to the rendering engine, that is
13
where we talk about the maximu m number to be displayed.
14
15
16
JUDGE BEGLEY: So you are getting this from the

specification, not from the claim?
MR. HELGE: Well, Your Honor, I think it is from
17
the specification and from the claims because you have this
18
idea of to be displayed. So what we have talked about with
19
respect to the determining step of the '690 claim 1, the '558
20
claim 4 and the '856 claim 1, we've had this idea of to be
21
displayed really is talking about what is going to be sent to
22
the rendering engine.
23
And so if we're reducing the number from N to N
24
prime in claim 4, we're really talking about what then gets
25
sent to the rendering engine. I think what Your Honor is
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
suggesting is maybe there could be a scenario in which claim
4, the maximum n umber, is filtering out things that are then
outside of the field of view.
JUDGE BEGLEY: I'm just trying to understand
your argument that this claim involves specifically a field of
view and some filtering beyond the field of view, because
those words don't appear in this claim. And so I'm not
suggesting anything. I'm trying to understand your position.
9
10
MR. HELGE: Understood, Your Honor. I believe,

as I look here again -- I'm sorry, Your Honor.
11
JUDGE BEGLEY: So am I understanding you to
12
say that you are getting the field of view idea from the to be
13
displayed language in the claims?
14
MR. HELGE: That's right, Your Honor. When we
15
look at claim 1, we have this idea of to be displayed, and
16
then that shows up in the determining step. This is, again,
17
this is going to determine what then goes into the rendering
18
engine.
19
Now, I think what Your Honor is saying is there
20
still is a field of view analysis, but the determining step of
21
claim 1, and also the step 1(b) of claim 4 -- excuse me, (b)(1),
22
(b)(2) and (b)(3), we believe are then going to the rendering
23
engine.
24
JUDGE EASTHOM: Maybe I can ask it this way:
25
So if we disagree that this claim requires you to do a field of
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
view analysis, does that mean that the prior art reads on
this -- this claim reads on the prior art?
MR. HELGE: Absolutely not, Your Honor.
JUDGE EASTHOM: Then you don't need a field
of view for your argument?
MR. HELGE: I think that's actually -- that's a
good way of putting it, Your Honor, because when we look at
the references that Bungie is asserting against these claims,
we're looking at Funkhouser '93, we're looking at Schneider --
10
well, actually Schneider was combined with Durward -- three
11
institution grounds that were not instituted.
12
There are some -- a set of maximum number of
13
claims, what I would call maximu m number of claims, that do
14
deal with challenges based on Schneider as having that
15
element.
16
And I think Your Honor is right that we didn't
17
necessarily need to deal with the field of view analysis
18
because Funkhouser '93 is only talking about effectively what
19
is in the field of view. And the maximum number that Bungie
20
is relying on is based on what is in the field of view.
21
Other claims that have similar features, at claim 4,
22
13, 8 and 16 from the '690 patent, again, I'm just generally
23
describing these as maximum number of claims. We have
24
claim 5 and --
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JUDGE CHUNG: Excuse me, counselor. When
you are talking about the slides, for the sake of ma king it
easier for Judge Begley, please refer to the slide numbers.
4
5
6
MR. HELGE: Yes, Your Honor. Judge Begley,

slide 28 is the '690 patent, claims 4, 8, 13 and 16.
Proceeding to slide 29, claims 5 and 7. And,
again, these are all very similar language. When you get to
the '501 patent we have claim 10. And, Your Honor, this is
slide 30. And this is slightly different language, as you will
10
see. The claims in the '501 patent and the '998 patent are
11
structured a little bit differently than the earlier patents.
12
But here we have the step of determining
13
comprises filtering the other user avatars based on a limit of
14
the other user avatars that ma y be displayed on the client
15
device display, the limit being set at the client device. So this
16
is getting to a similar crowd control computation of
17
determining an N prime value.
18
Moving on to slide 31, Your Honor, the question
19
here is very simple: What does the Petitioner say about the
20
maximu m number of claims? As I've already hinted, we have
21
Funkhouser '93 and we have Schneider.
22
For the '501 patent claim 10 -- Your Honor, I'm on
23
slide 32 -- we also have Sitrick which is dealing with the
24
customization of avatars. Primarily what I will be focusing
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
on from slide 32 to around slide 51 or so, 50, is the
Funkhouser '93 plus Funkhouser '95 combination.
On slide 33 I have a quotation here from the 1268
petition, page 6, and this is the petition, again, it's the '690
patent. And, Your Honor, just for general reference
throughout today, frequently I will be referring to the '690 as
sort of the baseline patent because it was -- although it was
the second IPR petition filed, it is actually the first in the
chain of these patents. Not first overall, but first of these
10
11
five.
So here we have an allegation by Bungie where
12
they first talk about objects such as avatars on slide 33. And
13
then there is later a discussion of what is actually in
14
Funkhouser '93 and there is a discussion of objects, within a
15
virtual environment, whether they should be displayed at a
16
reduced level of detail or even not at all.
17
One thing to note on this slide 33, you can see on
18
the bottom of the page they have quoted pages 251 and 253 of
19
Funkhouser '93. This will come back in a later slide.
20
I've gone on to slide 34. Here, again, we have a
21
quotation from the 1268 petition, page 36. Near the top we
22
have Petitioners stating that: As discussed by Dr. Zyda,
23
Funkhouser '93 discloses determining a maximum number of
24
objects to be displayed.
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And then there is an obviousness jump. And this
is where we come back to the river analogy. The question is
whether there is a stepping stone in this location? Dr. Zyda
further explains that applying the optimization algorithm
disclosed in Funkhouser '93 to the RING system, and this is in
Funkhouser '95, treating the other users' avatars like the
objects described in Funkhouser '93.
So what we're doing is we have a logical leap here,
whether you can treat avatars such as disclosed in Funkhouser
10
'95 like objects in Funkhouser '93. That's an unsupported
11
leap.
12
13
14
15
JUDGE BEGLEY: Are you disputing that

Funkhouser discloses avatars?
MR. HELGE: Your Honor, we don't dispute that
Funkhouser '95 discloses avatars.
16
JUDGE BEGLEY: Thank you. I meant
17
Funkhouser '95, sorry. I have been using, at least in my head,
18
I called Funkhouser '95 just Funkhouser and Funkhouser '93,
19
but I will try to adopt the '95 and the '93 to be clearer.
20
21
22
So do you dispute that Funkhouser '95 discloses or

teaches avatars?
MR. HELGE: We don't, Your Honor. I believe
23
that there is discussion of three-dimensional and there is an
24
orientation. I think there is a question of whether all of those
25
objects are actually associated with a user. But for the
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
purposes of what Funkhouser '95 is trying to teach, we don't
dispute that, Your Honor.
JUDGE BEGLEY: So even if we were to agree
with you that Funkhouser '93 doesn't teach avatars, how does
that help you?
MR. HELGE: Your Honor, that's the key question.
Funkhouser '93 is the reference where there is an idea of,
again, we believe that it is reducing texture. It is changing
the texture in order to maintain a frame rate. Changing
10
texture is not removing objects.
11
Now, in the optimization algorithm that gets
12
mentioned here by Dr. Zyda, Funkhouser says, using that
13
optimization algorithm, you are going to display each object.
14
And so when you get to, for example, figures 11(b)(1),
15
11(c)(1) and you see a change in the number of books on the
16
bookshelf, Funkhouser is talking about displaying all of the
17
objects.
18
Those books are not objects. Those books are
19
books on a bookshelf. And, in any event, the books don't
20
correspond to avatars. And there is one other variable that we
21
are going to be introduced to here shortly in Bungie's reply,
22
but the books don't correspond to users. Right?
23
Even if you say avatars could be 2-D or 3-D, an
24
avatar at minimum, Bungie agrees, is a graphical
25
representation of a user. Now, I showed the final page of
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Funkhouser '93 to Dr. Zyda during deposition. I said are there
any avatars on this page? He said no, of course they're not,
the books are not avatars.
So to get from Funkhouser '93's dealing with
objects to Funkhouser '95, one, in terms of at least the
optimization algorithm, there isn't a removal of objects. And
by incorporating that into Funkhouser '95, there
correspondingly wouldn't be a removal of avatars. It is just
not a logical leap. That is a stone in the river where there is
10
no foundation and it would just slip away.
11
JUDGE BEGLEY: Can you address the passage of
12
Funkhouser '93 that Petitioner points to in its reply to address
13
your argument that you have just said again here, that
14
Funkhouser '93 doesn't teach removing objects? I believe it is
15
the top of page 249 of Funkhouser '93.
16
MR. HELGE: Exactly right, Your Honor.
17
JUDGE BEGLEY: And it begins: If levels of
18
19
detail representing no polygons at all are allowed.

Can you address that passage and explain how it
20
doesn't show that Funkhouser '93 does teach omitting objects?
21
MR. HELGE: Absolutely, Your Honor. So this is
22
on page 40 of my slides. And so here, as you correctly noted,
23
we have a citation from Petitioner to page 249. As you recall
24
before, we were looking at pages 251 and 253 from Bungie on
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
their argument about how Funkhouser '93 allegedly omits
objects.
But, first of all, the optimization algorithm that is
being shown in figures 11(b)(1) and 11(c)(1) is clear,
according to Funkhouser '93. That optimization algorithm
shows all objects. So what you have here on page 49 is a
hypothetical possible alternative that is not being
implemented in the optimization algorithm.
If levels of detail representing no polygons at all
10
are allowed, Funkhouser '93 is saying, if this were to happen,
11
it doesn't happen in the optimization algorithm, but there is
12
something more important here and, that is, what Bungie has
13
underlined and italicized in the second-to-last line.
14
They say here: In such case, only the most
15
valuable objects are rendered. I mentioned before that in
16
trying to get across that stream from prior art to the invention
17
in obviousness analyses, there are dead ends.
18
This is a dead end because it introduces a new
19
variable that Bungie has never evaluated, Dr. Zyda has never
20
evaluated, and that's the variable of value. How do you value
21
an object and how do you value an avatar?
22
Funkhouser '93 doesn't tell us a thing about how to
23
evaluate avatars or how to value them. It doesn't teach us a
24
thing about that. He certainly doesn't tell you that you can
25
value avatars less than objects.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
And so when you import Funkhouser '93 into 95,
even if you could do that, there is no indication that you
would want to value an avatar as less than an object, such as a
bookshelf or the texture on a chair. It simply doesn't hold
water in terms of trying to get across that river of the
obviousness.
Your Honor --
JUDGE BEGLEY: Are you disputing that this
passage teaches omitting objects even if its -- in a
10
hypothetical system that isn't actually implemented in
11
Funkhouser '93?
12
MR. HELGE: Your Honor, I don't dispute the
13
words. I agree with what you are saying in that there is a
14
level of detail that represents no polygons at all. And I would
15
interpret that to be no polygons means no object. But it still
16
requires in this hypothetical context a valuation of objects
17
relative to avatars, for example.
18
Funkhouser '93 doesn't tell you that you can omit
19
avatars. He says here, if there is a level of detail representing
20
no polygons at all, only the most valuable objects are
21
rendered. That could be, for example, I'm here at a podium
22
and I have other objects in the room.
23
Now, ma ybe there is a texture on the wall that
24
wouldn't be rendered or there are decorations on the wall that
25
wouldn't be rendered and it would be a favoring of what is
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
closer to me because it is more important to me technically as
a user.
But it doesn't say anything about omitting avatars.
It doesn't suggest, oh, in this case you can omit the judges
because they have less value than something close to you.
That requires a different computation. And that's not in
Funkhouser '93.
JUDGE CHUNG: Isn't your argument essentially
just a piecemeal argument in the sense that you are attacking
10
the references individually, whereas Petitioner here is
11
applying Funkhouser '95, and you have stipulated to that
12
teaching avatars, and then with the Funkhouser '93 reference,
13
that does contain some sort of teaching about omitting
14
objects, wouldn't that perhaps suggest omitting avatars?
15
16
17
18
MR. HELGE: Your Honor, I don't see any

suggestion of omitting avatars.
JUDGE CHUNG: The combination that the
Petitioners presented.
19
MR. HELGE: Even then, Your Honor, I don't see
20
a combination -- I don't see even a combination, if you could
21
make it, that would say now you can start omitting avatars.
22
Again, the best evidence that they have to omitting
23
objects is something that then calls into question the question
24
of value. And what we're saying is then if you put the two
25
together they would have needed to make an argument about
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
value, about how a person of ordinary skill in the art would
have valued avatars and how you would have valued them
relative to objects.
That is something that didn't happen. That's
something that wasn't in the petition. It wasn't in their
analysis. And, I think, as you can see, in their original
petition they were really focusing on the books on the
bookshelf. Now this is a different argument.
And that's the reason. That's the reason that it
10
wasn't in there. It wasn't explained in the petition. But I
11
don't see any suggestion that you can get from o mitting
12
non-valuable objects to then omitting avatars where in a
13
virtual reality system generally the avatars are why you're
14
there.
15
JUDGE BEGLEY: But doesn't -- I'm sorry, I' m
16
confused. I believe that there can be some avatars that are
17
less important than others. I don't think, I mean, are you
18
saying that that is too much of a leap?
19
MR. HELGE: Absolutely, Your Honor.
20
Absolutely, Your Honor. Again, this is something that has
21
come in in a reply that now we've introduced this question of
22
value about omitting avatars.
23
With hindsight I think, you know, we look again at
24
being on the other river bank. We are on the bank of the
25
invention and we're looking back and we're saying there is a
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
path. Yes, of course, looking back maybe it would have been
a smart idea to omit something that required a certain
rendering time or rendering energy or processing time or
network capacity.
But based on what we see in Funkhouser '93 and
Funkhouser '95 we don't have that suggestion. That is a pure
hindsight argument, I believe.
JUDGE BEGLEY: Is your dispute that Funkhouser
'93 teaches omitting -- teaches the determining the maximu m
10
number limitation, is that based solely on your argument that
11
Funkhouser '93 doesn't teach omitting objects or avatars?
12
MR. HELGE: No, Your Honor. I think in terms of
13
the maximum number question, there is no express
14
determining of a maximu m number and a comparing of the
15
actual number of objects -- certainly not of avatars, but even a
16
comparing of ma ximu m number of objects versus the actual
17
number of objects for deciding what is to be displayed.
18
I think, obviously, I'm fa miliar with the Board's
19
Institution Decision and I know that there is a record here
20
from the Board as saying that there could be an optimization
21
that then leads to a maximu m number.
22
With this hypothetical about the no polygons at
23
all, if no polygons at all are allowed, this is really the only
24
instance in Funkhouser '93 where they throw in a value or an
25
opportunity to exclude anything. The other instances, in the
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
heuristics and the evaluation of the computations, the costs
versus the benefits, it is really an iterative process where you
are trying to display everything.
The optimization algorithm again is trying to
display everything to maintain a frame rate and they are going
to tweak it and it is going to be an iterative process in order
to hit that frame rate, and some textures may be very low.
8
9
Now, I don't see any maximum number limitation

in that process. But even in here, if levels of details
10
representing no polygons at all is evaluated, I think perhaps
11
one analogy we can look at is a grocery bag, a paper grocery
12
bag that can hold, you know, we have a label on the outside it
13
can hold 20 soup cans. And that's one way of dealing with it.
14
The maximum number is 20 soup cans. You can't have more
15
than that. It will break.
16
Another way is the bag has no number on it. And
17
you just start putting soup cans in it until it is full and then
18
you go out the door. And I see that as a potential distinction
19
here of what is in Funkhouser '93 versus what's in the claim,
20
in the maximu m number claims.
21
JUDGE BEGLEY: So in your view putting the
22
soup cans into the bag or bowl until it is filled, that doesn't
23
determine a maximu m number?
24
25
MR. HELGE: No, Your Honor, again, there is a

three-step process in the claim. There is determining a
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
maximu m number, and then determining an actual number and
then a comparison.
And so I think in the soup cans into the bag, all we
really have is we're going to fill the bag until it is full. We
don't really care how many soup cans there are in the bag, out
of the bag. It doesn't matter. It's just we're going to do it
until it is full.
8
9
And I think that is exactly the cost/benefit

heuristic of what Funkhouser '93 is talking about is akin to, in
10
that we're going to go through an iterative process and we're
11
going to try to display everything, but at some point we're
12
going to have to go to the lowest texture.
13
In terms of removing objects, again, this
14
disclosure at the top of page 249 doesn't provide any more
15
detail about the idea of a maximum number.
16
JUDGE CHUNG: When you optimize something
17
mathematically doesn't that mean that you are determining a
18
max value?
19
MR. HELGE: Absolutely not, Your Honor.
20
JUDGE CHUNG: You are taking the position that
21
when you optimize something that doesn't involve determining
22
a maximu m number?
23
24
MR. HELGE: Not according to Funkhouser '93,

Your Honor, no. The way Funkhouser '93 describes an
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
optimization is it is really a target value. It's a target frame
rate that they are trying to achieve.
They are trying to achieve that target frame rate
showing as many objects with as much detail, but it is not
about determining a maximum. Optimization, according to
Funkhouser, is very clear. It is about frame rate, not about
maximu m number.
Your Honor, we've already --
JUDGE BEGLEY: Can you explain the comparing
10
step, using your analogy of putting the soup cans in the bag,
11
can you apply that analogy to the last step of the comparing?
12
MR. HELGE: Your Honor, I think the way I deal
13
with it really is, according to the claim, the idea is I have 20
14
soup cans in front of me or ma ybe I have 25 and the bag has a
15
maximu m number of 20 and I'm going to put 20 into the bag
16
because I've compared what the bag can hold and what I have.
17
But in terms of, if I have 20 soup cans coming
18
down the line and I'm just going to put them into the bag until
19
the bag is full and ship it off, I don't necessarily know how
20
man y I have left. I don't know how many I started with. I
21
just filled the bag until it was full.
22
So I think the idea of the comparing actually
23
doesn't apply. It is not being performed in that analogy with
24
the soup cans into the bag without the maximum number.
25
JUDGE BEGLEY: And I have one last question.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. HELGE: Certainly.
JUDGE BEGLEY: Or at least I think one last
question only. If we accept your argument that at least
Funkhouser '93 is treating the books on the bookshelf as detail
or texture, how does that not at least suggest omitting
objects?
7
8
9
10
MR. HELGE: I'm sorry, Your Honor, if you accept

my argument that the books is texture?
JUDGE BEGLEY: Yes.
MR. HELGE: Well, Your Honor, I think the clear
11
answer is in Funkhouser '93 itself, which says that each object
12
is going to be rendered. Under the optimization algorithm
13
that then leads to figure 11(c)(1), each object is being
14
rendered. That's what Funkhouser tells us.
15
And that leads us to the conclusion that the
16
bookshelves have to be texture. Now, texture could be
17
anything. It could be a design on the back of a chair. It could
18
be a design on a door. This is according to Funkhouser '93
19
expressly. I'm sure we could come up with another analogy.
20
Even the panels on the Board's panel in front of
21
me are two different colors. It appears that there is about 10
22
different wooden panels facing me. Those could be blended
23
into one solid color, even though they are two different
24
colors. There is a different way of applying texture. But
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
texture is richness to the world and not necessarily distinct
objects.
So I think if you agree with me that the books are
texture, then there simply is no teaching within the
optimization algorithm of omitting objects, and we have
Bungie relying solely on what is on page 249 of their -- well,
on Funkhouser '93 as quoted in their reply.
MR. HELGE: Yes, Your Honor. Thank you.
10
Your Honor, I'm going to jump ahead. We've
11
actually covered pretty much all of my slides here on the
12
Funkhouser '93 disclosure, so I will jump ahead to slide 47.
13
And 47 is about the basis of combining
14
Funkhouser '93 and Funkhouser '95. On the upper left I have
15
a quotation from the deposition of Michael Zyda, Bungie's
16
expert in this case, and during deposition was the first time
17
that he realized that there was a cross-reference from
18
Funkhouser '95 back to Funkhouser '93.
19
Now, that cross-reference is solely related to a
20
cost/benefit analysis of the message traffic in Funkhouser '95.
21
What you won't find in Funkhouser '95, even though it was
22
written about two years later than Funkhouser '93, is an
23
express idea or suggestion by Funkhouser -- by Thomas
24
Funkhouser himself to combine these ideas.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
So when asked, when Dr. Zyda was asked about
the idea of filtering from within a field of view other avatars,
Dr. Zyda's response was, with respect to Funkhouser '95, I
would say that's not the problem he was trying to solve in that
paper. And so he doesn't disclose the idea of filtering avatars.
JUDGE EASTHOM: Let me ask you this: Doesn't
Funkhouser '95 teach the idea of you are only going to get
these visible avatars, right?
9
10
MR. HELGE: Your Honor, he says, I believe,

visible or potentially visible.
11
JUDGE EASTHOM: Okay. And then I think it
12
also says we don't want the machine to be clogged down, for
13
lack of a better word, if there are more and more users coming
14
in.
15
MR. HELGE: Yes.
16
JUDGE EASTHOM: So if you think of that and
17
you say, okay, I'm only going to give you so many, the
18
amount you can handle, how isn't that -- sort of suggests on
19
the other end by Funkhouser '93 that says, you know, we're
20
only going to give you so many that you can handle in a
21
certain frame, we're only going to give you this many, that
22
would be less than the maximum n umber that are out there or
23
the maximum number that you could view, it seems.
24
25
MR. HELGE: Your Honor, if I may, I think the

flaw in that conclusion starts with Funkhouser '95.
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MR. HELGE: Funkhouser '95 is not necessarily
about the processing power of displaying the avatars. I mean,
I think if you think back to Funkhouser '95, every avatar
looked the same. There were all these three-dimensional
spheres with different orientation arrows. And that's in the
final page of Funkhouser '95.
But the goal there was really about optimizing
message traffic. It was about saying that if there are people
10
down in the Patent Office lobby right now moving about, we
11
don't need to send them to Mr. Helge standing at the podium
12
on the 9th Floor because you can't see them.
13
And so it is really not necessarily about managing
14
the simulations that Funkhouser had in it, but it is really
15
about managing the message traffic.
16
Now, again, where Funkhouser '95 looks back to
17
Funkhouser '93, Funkhouser says look at my prior paper, I
18
came up with some cost/benefit heuristics, and you can do a
19
cost/benefit and you can figure out --
20
JUDGE EASTHOM: Let me interrupt you with
21
your analogy. So instead of just, you know, people that are
22
not close to you, they are way off campus, but suppose there
23
is a bunch of people now, a bunch of avatars, if you will, in
24
your field of view, and more and more come in this field of
25
view but sooner or later you are going to exceed the frame
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rate, right, you can't handle all of that, and then Funkhouser
'93 says, well, if you can't handle all of that just lop some of
them off, don't give them all of the information.
MR. HELGE: In that regard, Your Honor, what
Funkhouser '93 says, and, again, at best we can point to page
249, what Funkhouser '93 says is display the most valuable
objects. What Funkhouser says is only the most valuable
objects will be displayed. But Funkhouser '93 doesn't give
you the tools to tell you how to make that evaluation.
10
Now, if I have more avatars than I can manage to
11
hit a frame rate, ma ybe the first thing that drops is the
12
podium.
13
JUDGE EASTHOM: Well, I mean, it would seem
14
the obvious place to do it would be if you are just limiting
15
them -- '95 is limiting them to a field of view. The ones on
16
the very edge of the field of view, those would be the least
17
favorable ones, it would seem to me.
18
You wouldn't try to squeeze everybody in the
19
whole frame so you just keep the ones that are, you know, not
20
on the edge of the field of view, I would say.
21
MR. HELGE: Your Honor, in that regard I think
22
where Funkhouser speaks directly to that idea is you are not
23
just getting avatars that are in your field of view but you are
24
getting ones that are close to your field of view, what they
25
would call potentially visible.
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I asked Dr. Zyda, what does potentially visible
mean? And his response was, well, you might see them in the
next few frames. So, for example, if I'm in this room and I
might turn to the right, I would have avatar data for the
people who are next to me.
And Funkhouser wants you to have those, because
if you don't have those and you turn, and suddenly you have to
start downloading more information to see those people,
Funkhouser doesn't want them popping up.
10
Now, what Michael Zyda said about that as well is
11
that's a jarring experience. You don't want lag associated
12
with movement or -- and this gets a little bit to our teleporting
13
and perspective change argument -- you don't want lag, jarring
14
experiences like that, because it disrupts the virtual reality of
15
it.
16
JUDGE EASTHOM: So you want as much
17
information as you can handle. That's basically what you are
18
saying.
19
MR. HELGE: That's right.
20
JUDGE EASTHOM: I mean, so isn't the
21
combination, isn't Funkhouser '93 saying, well, if you can't
22
handle it all we're not going to give all of it to you?
23
MR. HELGE: Well, again, Your Honor, the only
24
place that it talks about it in Funkhouser '93 really is in that
25
paragraph that Bungie cited in the reply, which imposes the
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additional constraint of value, and we don't have the tools
from the prior art.
Yes, today in hindsight looking back we can
estimate how things should have happened but, again, virtual
reality was about bringing people into the space and getting
them to work together. And if we start saying we're going to
drop out these people or those people, we don't want them, we
can't handle them, to some extent you are frustrating the
entire idea of virtual reality.
10
And that's why I described Worlds' activity,
11
Worlds' concept of not being able to display everybody who is
12
in the space really is a counterintuitive thing. That's why it
13
comes a little bit out of left field and you are not going to see
14
that in the prior art, that idea of dropping avatars from the,
15
well, with the N prime, for example, the N prime value, crowd
16
control.
17
JUDGE BEGLEY: You have spoken about how
18
page 249, I believe it is 249, that discusses omitting the least
19
valuable objects as in a variable value.
20
Doesn't Funkhouser '93's optimization algorithm,
21
isn't that all premised on adding in descending order of value?
22
So I guess I'm -- can you explain why Funkhouser '93 doesn't
23
give a person of ordinary skill in the art enough of an
24
understanding of the least valuable objects that allows
25
someone to make that determination?
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MR. HELGE: Your Honor, a very good point here,
which is Funkhouser '93 may give a person of ordinary skill in
the art the tools to evaluate the value of different objects, for
example, again, something that is far away from me versus a
podium here.
But what we are introducing here with the
combination of Funkhouser '93 and '95, again, even if it could
be made, what you are introducing here is the additional
element of avatars. And now the question is how do you
10
weigh the relative importance of avatars versus objects? And
11
so what that phrase in 249 talks about is the most valuable
12
objects will be displayed.
13
To some, again, we can look at this at hindsight,
14
but to some ma ybe all of the avatars were valuable and the
15
objects were less valuable. You don't need the walls of a
16
building, you don't need anything, you don't need texture of
17
the environment as long as you have the avatars. That is one
18
very conceivable way of looking at that.
19
But, again, we don't have a record on that point.
20
Bungie hasn't presented it. They haven't presented evidence
21
on the value. And Funkhouser '93 simply doesn't give you the
22
tools or the ability to weigh the relative value of avatar versus
23
object.
24
25
So, Your Honor, as I mentioned, in terms of

Funkhouser himself did not see a basis, or did not at least put
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it in his paper, a suggestion to combine both Funkhouser '95
and Funkhouser '93.
There are two other -- excuse me, actually there
are four other claims that I would just like to touch on briefly
with this maximum number concept. And I will call this the
one variable claim. And this is claim 8 of the '501 patent.
And here there is the filtering of other user avatars --
8
9
10
JUDGE CHUNG: Excuse me, counselor. Can you

refer to the slide number?
MR. HELGE: Yes, Your Honor, I apologize, slide
11
49, filtering other user avatars based on at least one variable
12
other than positions of other user avatars and orientation of
13
the first user avatar.
14
We also have from the '998 patent, and this is
15
slide 50, we have claims 13 through 15, and these are some
16
additional claims dealing with limiting the number of remote
17
user avatars shown on a display.
18
The Petitioners have used Schneider, the Schneider
19
reference for these rejections or for these challenges. And
20
one of the things that Schneider says is that hastening the
21
rendering process can be achieved by culling objects from the
22
scene before rendering.
23
Now, Schneider provides this disclosure in the
24
context of different ways of hastening rendering. And there is
25
a little bit of discussion in Schneider suggesting that a
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piecemeal approach won't work. But at a fundamental level
what you get here with Schneider is an idea.
Just like in Funkhouser '95, ma ybe you have an
idea of only the most valuable objects will be rendered. Here
you have culling objects from the scene before rendering.
This is a little like suggesting that to lose weight you need to
exercise more.
8
9
At the time that we are talking about, everything

you did had a cost. The idea of culling objects from the scene
10
gives you perhaps an incentive to take a step off that first
11
river bank, but it doesn't tell you where to step.
12
Exercise, in my analogy here, exercise has cost.
13
You get hungry. You have to eat more. The next thing you
14
know you have offset all of the gains of the exercise by being
15
hungry.
16
That's what happens here. And that was a concern
17
at the time, was if you are going to be culling objects from the
18
scene there is a cost to that and you have to know which
19
objects to cull. It is certainly feasible that by culling objects
20
you could actually be expending more resources than you
21
would have expended if you had just simply rendered
22
everything you received.
23
24
So with the Schneider reference, I simply make the

point here that, as Schneider calls it, a highly piecemeal
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approach, it is really just an idea. And so Schneider we don't
believe either gets to the elements of these claims.
Your Honors, I will next move on to slide 52.
Slide 52 begins the discussion of the determining claims. And
this is really focused on the claims from the '856, the '690 and
the '558. And perhaps if Your Honors would like I can go
back and briefly touch on claim construction issues.
8
9
Your Honors, at this point I think actually, as I

said, it may make sense to talk about claim construction.
10
Briefly on slide 12, I apologize for jumping around here, slide
11
12 we did submit the expiration dates of the patents at issue.
12
My understanding is that Bungie has no issue with that.
13
So we're looking at all patents, all five of these
14
patents being expired by November 30th, 2016, and most of
15
them being expired by November 12th, 2016. Most of those
16
expirations occurring --
17
18
JUDGE BEGLEY: I would just like -- sorry,

counselor.
19
MR. HELGE: Yes, Your Honor.
20
JUDGE BEGLEY: Just because you did submit
21
dates and then changed them, I would just like to hear that
22
you have now confirmed these and you are positive that these
23
are the correct expiration dates. I would like some kind of
24
confirmation from you that no other additional revisions are
25
expected.
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MR. HELGE: Absolutely no other revisions are
expected, Your Honor. What I had failed to calculate the first
time was the effect of the terminal disclaimers. And so what I
have added here in the chart with the supplemental reply, or,
excuse me, the supplemental response, added the chart of
where the terminal disclaimers fall and how they have
affected these dates.
8
9
JUDGE BEGLEY: Can you also, because the chart

does not explain this, many of the patents have different
10
lengths of patent term adjustments, but then they all expire,
11
most of them expire on the same date. Is that because of the
12
terminal disclaimers?
13
MR. HELGE: Exactly, Your Honor, that's right.
14
JUDGE BEGLEY: Okay.
15
MR. HELGE: Oddly, the only patent that was not
16
subject to a terminal disclaimer was the '558 patent, and that's
17
from case 01269, but that only had 18 days of patent term
18
adjustment. So, of course, we measure from the same initial
19
date and that gets us to, according to our calculation,
20
November 30th of 2016.
21
JUDGE CHUNG: Is it Patent Owner's position
22
that these patents are entitled to the provisional filing date
23
where applicable?
24
25
MR. HELGE: Yes, Your Honor. As a matter of

fact, the, I believe it's the '690 and the parent patent to that,
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
which I believe was the '045 patent, had Certificates of
Correction filed to include the provisional, and that occurred
a couple years ago. It was before the filing of these cases.
JUDGE CHUNG: Okay.
MR. HELGE: But we do take the position that all
are entitled to the provisional dates.
JUDGE CHUNG: Okay.
JUDGE BEGLEY: Is that in the record?
MR. HELGE: Your Honor, the Certificates of
10
Correction are because I believe they were all granted before
11
these cases began.
12
JUDGE BEGLEY: No, your position that the
13
patents are entitled to priority back to the provisional,
14
because we don't -- it is not assumed that patents get priority
15
back to the provisionals. That's not something the Patent
16
Office checks in initial examinations. So there needs to be a
17
showing that the patents get priority back to the provisional.
18
MR. HELGE: Your Honor, my understanding from
19
the case law before this Board has been that if there is a
20
question about the provisional or the claims not being entitled
21
to their priority, the claimed priority, that that would be the
22
burden of the Petitioner to show. I don't believe there has
23
been an affirmative showing from us that they are entitled to
24
their priority claim.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
I do believe that the provisional is of record, it
ma y be of record in all of the cases, but at least some of the
cases where it has been submitted as an exhibit by Bungie.
JUDGE EASTHOM: I'm a little lost. How does
that affect any analysis of whether or not the provisional is
incorporated or is relied upon as a priority date? I forgot how
that played. Could you remind me? Sorry.
8
9
MR. HELGE: Certainly, Your Honor. So at least

as to patent term it doesn't affect it.
10
11
MR. HELGE: The patent term is based --
12
JUDGE EASTHOM: Right.
13
MR. HELGE: -- on the first non-provisional. In
14
terms of being entitled to the date of the provisional, you
15
know, I know, for example, in the prosecution there is an
16
assumption --
17
(Beeping.)
18
JUDGE EASTHOM: Sorry. We have some kind of
19
a warning.
20
(Pause)
21
MR. HELGE: I mean, for example, I can tell you
22
from personal experience there have been cases where
23
someone has filed a -- or a prior art reference has been
24
applied against one of my prosecuting patents, and it is either
25
continuation in part or it is based on a provisional, and I have
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
gone back and made a showing of how that art was not
entitled to its earlier dates.
JUDGE EASTHOM: Right.
MR. HELGE: But that's as a patent prosecutor,
Your Honor, not necessarily in this context.
JUDGE EASTHOM: Right, I didn't think there
was one of those -- I mean, I guess theoretically it could
affect some claim construction, but I guess that's not really
before us. I don't know what the issue is.
10
MR. HELGE: If it helps, Your Honor, and this
11
ma y, is that the specification that is filed for each of these
12
five patents is, I believe, with the exception of the initial
13
paragraph, effectively identical. I don't believe that there is
14
any substantial rewriting. The crowd control, that sort of
15
thing, is sort of disclosed.
16
17
18
JUDGE EASTHOM: Okay. Thank you. That's

helpful.
MR. HELGE: As Your Honors noted earlier, I
19
believe this morning, for expired patents the standard is the
20
Phillips standard. And we do have the claim construction
21
order from the District Court in Massachusetts dealing
22
specifically with, for example, the avatar term.
23
One thing that has really been I think unclear for a
24
lot of practitioners for a while is the difference between the
25
broadest reasonable interpretation standard and the Phillips
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
standard. One case that came up recently, this was actually
earlier this year, and that was the PPC v. Broadband case, and
I have quoted this here on slide 14.
And while the broadest reasonable interpretation
standard simply needs to have some support in the
specification, the Phillips standard and the District Courts
applying the Phillips standard, are really seeking out the
correct construction, the one that most accurately delineates
the scope of the claimed invention under the framework laid
10
11
out in Phillips.
JUDGE EASTHOM: I think there are some cases
12
that are saying that, you know, 95 percent of the time these
13
are pretty much the same. We always do look through the
14
spec, I think, at least that's my view of it, and I don't see
15
much daylight here between -- right now as we speak I haven't
16
seen any differences other than what the District Court came
17
up with, but on the term avatar, right, everything else is pretty
18
much the same?
19
MR. HELGE: I think out of the terms that the
20
District Court construed, Your Honor, I think only avatar is
21
really -- needs a light shined up upon it here today. And I can
22
do that now, if you would like. I can jump to that.
23
JUDGE EASTHOM: It is your case, or your
24
response, sorry. I mean, I don't want to take you out of your
25
rhythm there.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. HELGE: Understood, Your Honor. Thank
you. So from here -- I'm on slide 15, Your Honor -- and that's
under Phillips the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the claim but
also in the context of the entire patent, including the
specification.
And here, Your Honor, where I may disagree with
you a little bit is about the difference, perhaps, between
Phillips or the broadest reasonable interpretation.
10
Dr. Zyda, on slide 16, when asked about his review
11
of the patents in providing his opinion on the determining
12
term, you know, I think as Bungie said this morning, they
13
were looking at a very general meaning, what does
14
determining mean, and looking at it perhaps in isolation.
15
But that's not necessarily what is required, even
16
under the broadest reasonable interpretation standard. There
17
still needs to be a reason. It needs to be consistent with the
18
specification.
19
On slide 17 here there is a little bit more dialogue
20
between myself and Dr. Zyda where he, again, he reached an
21
interpretation of the determining term without reading the
22
specification. He reaches his construction, frankly, just based
23
on the claims.
24
25
So if we then proceed to slide 52, I will talk about

how our specification does deal with this determining term.
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Now, I concede that the specification does not define
determining, although it gives us some clues of what is to
happen here.
And this is slide 52, Your Honor. We're at the
'690 patent, claim 1, step B, and, again, we have this phrase:
Determining, from the received positions, a set of the other
users' avatars that are to be displayed.
8
9
Now, we will see this same language in the '690

patent, claim 1, and a few of the other independent claims in
10
the '690 patent. We will see it in the '558 patent, claims 4 and
11
6. We will see it in the '856 patent, claim 1. We will see
12
different language than this in the '501 patent. And I will
13
come back to that.
14
On slide 53 there is a concession by the
15
Petitioner -- and this is in the 1268 petition -- that crowd
16
control as described in the specification does fall within the
17
scope of determining. And we don't disagree with that. We
18
think that is exactly right.
19
The difference really is whether other things, other
20
things that are coming later within the rendering pipeline fall
21
within the scope of determining.
22
Slide 54, dealing with this determining element,
23
where does Petitioner look for this element in the prior art?
24
25
Slide 55, and the answer to that, Funkhouser '95 is

really a field of view display. The idea, according to
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Petitioner -- all right, here we go, in slide 56 -- Funkhouser
discloses, and this is Funkhouser '95, discloses the client
determining, from the received positions, a set of the other
users' avatars that are to be displayed to the first user. And
this includes determining other users within the field of view
of the first user.
Now, they have included a reference to one of
their annotations above, but it is very simple. According to
Petitioner, if you are looking at a virtual scene, there has been
10
a determination not to display other things outside of that
11
virtual scene, outside of that field of view.
12
13
On slide 57 we have two other indications from -coming from again the 1268 petition.
14
JUDGE EASTHOM: Did you actually construe
15
determining? Do you have a proffered construction of it that
16
excludes this field of view idea?
17
MR. HELGE: Your Honor, our view is that
18
determining has to occur before the display process. The way
19
the --
20
JUDGE EASTHOM: That's what your construction
21
-- because I was looking for your construction. I see you have
22
a long discussion of it. But what did you actually construe it
23
as?
24
25
MR. HELGE: Your Honor, I think you could -now, we didn't put this in our papers, and I don't want to put
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
on a new proposed construction, but really determining is the
idea of filtering before the rendering engine. It is really the
things that are happening before the display processes.
JUDGE EASTHOM: But you don't have a
proffered construction. I just want to make sure, I might have
missed it, but there is no proffered construction for the term?
7
8
MR. HELGE: No, Your Honor, we don't have a

very concise quotation that we can give to you.
JUDGE EASTHOM: Okay. Continue. Go ahead.
10
11
JUDGE BEGLEY: I'm sorry. Thank you, Judge

Easthom, you can continue.
12
13
JUDGE EASTHOM: No, you go ahead, Judge

Begley. He answered my question already.
14
JUDGE BEGLEY: I think you are bringing this up
15
and it's in your briefs as well, but why can't the determining
16
be part of the rendering process and still be distinct from a
17
display?
18
MR. HELGE: Your Honor, I believe the answer to
19
that question really comes down to, one, how the specification
20
deals with the idea of the rendering engine. The display,
21
according to the patent specification, the display really is
22
what is happening in the rendering engine. The '690 patent,
23
column 7, lines about 50 to 54, talk about the rendering
24
engine and its relationship to outputting an image to a device,
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for example. That discussion is entirely consistent with what
Dr. Zyda said display means to him.
If I can go ahead -- I think I need to jump ahead to
slide 64, and this is in response to some things that the
Petitioners pointed out in the reply. Dr. Zyda said, and this is
in response to my question about the meaning of display,
again, slide 64: "In the technical computer graphics sense,
display is not a word that people use that much. They would
typically say we're going to send this geometry through the
10
graphics pipeline where it would be rendered into pixels and
11
frame buffer."
12
What Dr. Zyda is telling us there is we need to
13
know what display means. We need to understand where the
14
display occurs, because the determining has to occur before it.
15
And what Dr. Zyda is saying from Bungie is that in a
16
technical computer graphics sense --
17
(Beeping.)
18
JUDGE EASTHOM: Sorry about that. It is just
19
20
for testing purposes. There's nothing to be concerned about.

MR. HELGE: Thank you. So he is saying that
21
display, we need to understand what display means because
22
the determining has to occur before in these claims. And he is
23
telling us that display means we are going to send this
24
geometry through the graphics pipeline where it would be
25
rendered into pixels and frame buffer.
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Now, this is entirely consistent with how the '690
patent and all of the patents in our family talk about the
rendering engine and what it is going to do.
4
5
6
JUDGE BEGLEY: So is your position that

rendering and displaying are the same thing?
MR. HELGE: Yes, Your Honor. Rendering is part
of the display process. Now, certainly there is an output. I
think the way Dr. Zyda described it is that when you draw --
rendered into pixels and frame buffer, and then he uses the
10
term draw, for example, drawing to a display. It is the idea of
11
setting those pixel levels.
12
And it is really just the processing of the data that
13
is being input into the rendering engine, processing that data,
14
figuring out what the levels of those pixels are going to be,
15
and then sending that data to a screen, you know, we can call
16
it a display, we can call it a screen, a monitor, and those pixel
17
values are going to be set. And that's from a graphics
18
perspective, according to Dr. Zyda, that's how we interpret it.
19
JUDGE BEGLEY: So they are not the same thing,
20
21
one is part of the other?

MR. HELGE: Well, Your Honor, I would say that
22
display -- the way Dr. Zyda describes it, displaying includes
23
what is happening at the rendering engine and includes the
24
output, drawing something to a display. That whole concept
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he describes here as display. That's how we are going to use
the term he says.
And so that's fairly clear. That tells me that we
have to say the field of view occlusion, or the field of view
culling that's going to happen as part of the rendering engine
is really part of the display.
JUDGE EASTHOM: But is there an algorithm?
Are you saying that your algorithm to cull the field of view is
in the rendering engine?
10
11
JUDGE EASTHOM: And that's disclosed in your
12
spec?
13
MR. HELGE: That is. That is. I believe, again, I
14
believe it is column 7, probably lines 50 to 54. And I do have
15
a slide on this. It may be a little bit earlier.
16
Your Honor, I direct you to, it looks like slides 10
17
and 11 of my presentation both deal with that issue. 11 ma y
18
be better.
19
20
21
JUDGE EASTHOM: Are you pointing to column

7, around line 48 or 50?
MR. HELGE: Yes, Your Honor. On the '690 it is
22
column 7, lines 50 to 54. And the quotation here from the
23
patent, and also from our slide 11: "Rendering engine 120
24
then reads register 114, remote avatar position table 112,
25
rooms database 70 and avatar image databases as required,
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and rendering engine 120 renders a view of the virtual world
from the viewpoint (position and orientation) of A's avatar."
JUDGE EASTHOM: Is that something that
happens with chat processor 106? Because I still don't see
how that is figuring anything out other than just responding to
the data that's sent to it.
MR. HELGE: I agree with you, Your Honor, I
think that is just computing data and spitting out -- wherever
people are located, that's where they are spitting them out at.
10
JUDGE EASTHOM: So the determining happened
11
before?
12
MR. HELGE: That's right, Your Honor, and that's
13
why determining has to be, from the intent of these claim
14
drafters and the intent of the specification writers,
15
determining has to be something that occurred before this
16
rendering engine.
17
Now, what we have is we have a detailed
18
discussion of the crowd control concept. We have a
19
discussion of the N prime value, for example. And that's
20
happening with data that is going into the remote avatar
21
position table. There is actually some manipulation of that
22
data.
23
All of these other components, and even the
24
rendering engine to some extent, are being controlled by the
25
CPU. But if I had to tell you how is that determining
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occurring, it would be with respect to the data that's in the
remote avatar position table before it is read by the rendering
engine. That's where the determining occurs. That's the
crowd control.
JUDGE BEGLEY: Can you explain, and I asked
this question of Petitioner, so if N and N prime are larger than
the number of avatars in the field of view of an avatar or the
viewpoint of an avatar, does the rendering engine only display
what is in the field of view, in the viewpoint, of the avatar?
10
MR. HELGE: Your Honor, I believe that's correct.
11
If I understand, so N and N prime -- N is the value that the
12
server is setting and that's going to dictate how much data the
13
server sends to the client. And N prime is what the client is
14
going to receive -- excuse me, N prime is what the client is
15
going to further limit N down to.
16
But from my understanding, you are saying that
17
both N and N prime are larger than what is actually in the
18
field of view. And in that context those limitations aren't
19
actually going to be applied. The avatar will simply see what
20
is in the field of view.
21
JUDGE BEGLEY: So how does that not show that
22
the rendering engine is doing some filtering and determining
23
what avatars will be displayed?
24
MR. HELGE: Well, I think, Your Honor, the idea,
25
again, comes back to, if displaying includes what's happening
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in the rendering engine, then it cannot be doing it, it cannot
be doing that determining before you get to the rendering
engine. The rendering engine does what the rendering engine
does and not dealing with things beforehand.
That comes down, again, to the idea of display. If
the display includes the rendering engine the determining has
to be before the rendering engine.
8
9
10
11
JUDGE BEGLEY: I think I'm having trouble with

your assumption that there can't be different parts of a
rendering.
I believe -- can you explain how that squares with
12
your expert's testimony that field of view could be one step
13
along the way of the rendering and the display is the output?
14
MR. HELGE: Well, Your Honor, I think where he
15
was going with that is that, yes, there is a display at the
16
output. For example, even in our own patent, page 11 here,
17
you see the display is the output and the field of view is the
18
first stage of the rendering engine. And we don't obviously
19
take issue with what is shown in figure 4 here of our patent.
20
But I think what Mr. Pesce was saying still jibes
21
with the idea that here you've got a display shown as the
22
output. But in the context of what people were saying with
23
computer graphics at the time of this invention, at the time of
24
the specification writing, as Dr. Zyda said, display means we
25
are going to send it through the rendering engine.
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Now, again, there is going to be an output --
JUDGE BEGLEY: I guess, ma ybe can we just step
back to a higher level?
MR. HELGE: Sure.
JUDGE BEGLEY: Why doesn't the rendering
engine provide support for the determining limitation?
MR. HELGE: Your Honor, I don't believe I can
answer that without also dealing with the display portion of
that claim language, in the sense that we have -- we have to
10
know what is displayed, or what is the display process in
11
order to know where the determining occurred and why the
12
determining has to occur before that.
13
And I would come back to that with, the structure
14
of these claims, the '690 claim 1, the '558 claim 4, the '856
15
claim 1, are structured in that particular way, that the
16
determining is about what is to be displayed. Now, the patent
17
talks about the display process as running through the
18
rendering engine.
19
20
21
JUDGE BEGLEY: Where does the patent say

display in the specification?
MR. HELGE: Well, Your Honor, obviously it says
22
it with respect to what is labeled physically as a display in
23
figure 4, but in terms of the idea of the display, we really get
24
it here in column 7, lines 50 to 54, where we talk about
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rendering engine 120 rendering a view of the virtual world
from the viewpoint, position and orientation, of A's avatar.
Now, we also have it, of course, in the '690 patent
claim 2, which I believe gives us some compare and contrast
data that is actually very helpful in this situation.
So, for example, when we made our argument in
our responses about where the determining has to occur, and
where it has to occur relative to the rendering engine,
Bungie's response was to cite to claim 2 of the '501 patent.
10
Claim 2 of the '501 patent -- I can jump ahead here
11
to slide 75. Slide 75 is a comparison of the '690 patent claims
12
1 and 2 and claims 1 and 2 of the '501 patent. And there are a
13
few precursor details that I would like to come back to
14
shortly.
15
But what we have here in claim 2 of the '690, we
16
have a step D, displaying the set of the other users' avatars
17
from -- and it has a mistake here, of course -- but based on the
18
orientation of the first user's avatar as monitored in step C.
19
Now, that sounds a lot like we just talked about
20
with the rendering engine, that you were rendering a view
21
based on the position and orientation of your avatar. And now
22
here the way the '690 patent is talking about it, is in the same
23
sense, that that is the display process.
24
25
Now, the '501 patent also has a determining step.

And the way Bungie has been using the '501 patent, both
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claims 1 and 2, is to say that these effectively are the broadest
spread, in other words, the umbrella of determining under
which all of the other claims have to fall.
And the reason is because in claim 2 of the '501
patent we have the step of determining -- it is a wherein
phrase -- wherein the step of determining comprises filtering
the other user avatars based on the monitored orientation of
the first user avatar.
Now, that filtering also occurs in the rendering
10
engine. If you compare and contrast those two claims, what
11
you can see is that in the '501 patent, claim 2, this filtering of
12
other avatars and rendering the view from the viewpoint of the
13
user, is part of the determining step.
14
But in the '690 patent, the displaying of the other
15
user avatars based on the orientation is separate. Claim 2 is
16
not describing the determining step of claim 1. Claim 2 is
17
adding a new step, C, and a new step, D.
18
So the way these claims have handled this question
19
to some extent, Your Honor, Judge Begley, they have
20
suggested the very answer that you are getting to, which is
21
how is display being handled and how is display being
22
handled not just in the '690 patent but also in the '501 patent.
23
And this is exactly the reason why we believe that claim 2 of
24
the '501 patent is not building an umbrella under which all of
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the claims have to be interpreted. It is not building an
umbrella of determining under which they all have to fit.
There are a few clues to that as well. Counsel for
Bungie earlier was quoting claim 1 of the '501 patent a few
times, but I believe if we look back in the record he
misquoted a few times, because in the '501 patent, claim 1,
we're not --
8
9
JUDGE EASTHOM: Which slide are you on,

counsel?
10
MR. HELGE: I apologize, Your Honor, slide 74,
11
one previous. In claim 1 of the '501 patent we have a
12
determining step also. But in this one it is not a determining
13
of other avatars to be displayed, and I'm going to use that
14
specific phrase, to be displayed, that phrase that we saw in the
15
'690 and the '558 and the '856.
16
It is a different language. It is a little bit
17
different. And to be very honest with Your Honors, I've
18
wrestled with this a lot trying to figure out why did they make
19
this change? What is happening here? Why is this
20
determining by the client device a displayable set of the other
21
user avatars instead of determining a set of the avatars to be
22
displayed?
23
It is different language. Does it have a meaning?
24
I think what it tells us and what it keys to us, what it leads us
25
to is a determination that, whatever they were trying to reach
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in the '501 patent with claim 1, it was different than what they
were trying to do with the '856, with the '690 and the '558.
And that when we then come to slide 75, claim 2
of the '501, and we look at the structure of these claims, we
see that that idea of the rendering engine, where that
rendering engine is playing a part in providing support in
these claims, is different in the '690 patent --
8
9
JUDGE EASTHOM: But these all have the same

spec, right?
10
MR. HELGE: They do, Your Honor, they do.
11
JUDGE EASTHOM: So, I mean, you know, big
12
picture, aren't you saying that determining is reasonably -- the
13
plain meaning of it includes this rendering engine idea? In
14
other words, it includes filtering, as it says here in claim 2.
15
So in the big scheme of things determining the
16
plain meaning does not preclude something happening at the
17
rendering engine.
18
MR. HELGE: Your Honor, I think it creates a
19
problem when you look at the '690 patent. If we interpret
20
determining that way it creates a problem with the '690 patent
21
because with claim 2 the displaying the set of the other user
22
avatars based on the orientation of the first user's avatar, that
23
catches what the specification talks about with the rendering
24
engine. That's a different step. That's a step D rather than
25
step B.
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1
2
JUDGE EASTHOM: But it is saying that whatever

happens at the rendering engine is a determining step?
3
4
MR. HELGE: That's how I read it, it's not a

determining step. It's a displaying step at this point.
JUDGE EASTHOM: But the claim language in
claim 2 says determining comprising filtering the other user
avatars.
MR. HELGE: Yes, in the '501 patent, Your Honor.
JUDGE EASTHOM: The '501, right. So that's the
10
same spec, so it is saying to us, okay, if you have written
11
description support for that, you are saying that the word
12
determining has support through the rendering part of the spec
13
that is in all of the patents?
14
MR. HELGE: Your Honor, you've raised a great
15
point, and that is the written description support. When we
16
made our argument in our response about how to interpret the
17
'690, how to interpret the '856, how to interpret the '558, what
18
did Bungie come back with?
19
They said, no, you are not -- well, they said no
20
specifically -- they didn't point to a specification. They didn't
21
point to the spec and say here is where the spec says this and
22
this is why you are wrong. They pointed to the '501 patent
23
claim 2. They have never gone back and said this is where the
24
specification supports claim 2 of the '501 patent.
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1
2
Now, we don't have full briefing so I'm not

prepared to say that the 502 is not supported under 112.
JUDGE EASTHOM: The 502? I'm sorry.
MR. HELGE: I'm sorry, the '501 patent claim 2 is
not supported by 112, written description, for example, but I
also find it telling that Bungie never pointed to the written
description support for their argument that claim 2 is now
binding on all of the other claims. You are right, we do have
the same specification.
10
JUDGE EASTHOM: I guess I'm not understanding
11
your argument. Are you saying that you might not have
12
support for claim 2, therefore, we can't read determining in
13
claim 2 to be supported by the common rendering disclosure
14
of all of the patents?
15
MR. HELGE: Your Honor, at this point, again, I
16
don't have -- we don't have full briefing on the 112 issue so
17
I'm not prepared to say we don't have support for anything.
18
But what I can say is that we do have written description
19
support for interpreting the '690 patent the way we have, and
20
claim 2 of the '690 patent the way we have.
21
And that is to say that displaying in step D of
22
claim 2 of the '690 is supported in the spec as described by
23
the rendering engine.
24
25
JUDGE EASTHOM: Okay. So let me ask it this

way then: If claim 2 of '501 is supported, then would
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Petitioner's reading of the determining step on the prior art be
correct?
MR. HELGE: That's a pretty big hypothetical,
Your Honor. Your Honor, if we found support -- I will
answer this way, Your Honor: I think that we recognize the
case law that says similar claims, similar claim terms
generally are construed consistently throughout a family.
JUDGE EASTHOM: Right, that's the idea, right.
MR. HELGE: And within, you know, obviously
10
within these patents we do have the same spec. But I would
11
also note that it is the Petitioner's burden of proving
12
unpatentability. And when it came time to rebut our argument
13
about how to read the '690 patent, claim 1 and claim 2, their
14
go-to wasn't the specification citation.
15
It was a claim that was filed long after. I think it
16
is about 13 years after the first filing of the provisional. So
17
we're looking way later. We're looking at a different person
18
drafting the claims potentially.
19
JUDGE BEGLEY: I'm having trouble
20
understanding this discussion because I guess the Petitioner
21
does cite to parts of the specification in both their petition
22
and their reply.
23
So I think that -- and maybe I will just let
24
Petitioner clarify -- but I don't think it is a fair reading of the
25
record to say that Petitioners only pointed to claim 2 of the
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'501 patent in response to your argument. They have a several
page discussion in their reply. I'm looking at page 9 of the
1264 reply that does cite to parts of the specification. Maybe
you could address that.
5
6
MR. HELGE: Your Honor, I have the 1268 reply.

I think they are fairly consistent.
(Pause)
JUDGE BEGLEY: It's okay. I mean, the record
speaks for itself. I'm having trouble seeing the reply as only,
10
only pointing to claim 2. I don't think that's accurate. So we
11
can move on.
12
MR. HELGE: Your Honor, if I can just quickly
13
address. I do see here, I'm in the 1268 reply, there is a
14
mention of the '690 patent at 4, column 4, lines 44 to 48,
15
discusses executing programs and then displaying graphical
16
results thereof.
17
With respect to that particular citation, executing
18
programs and then displaying the graphical results thereof,
19
they say, Such disclosure supports interpreting the rendering
20
process as separate from the act of displaying, rather than
21
conflating them as PO argues.
22
They follow, and nothing about this disclosure is
23
inconsistent with Dr. Zyda's testimony. But I believe as we
24
mentioned before, Dr. Zyda has said, no, actually we're not
25
going to use the word display. We are going to use the word
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send it to the rendering engine and then put it into frame
me mor y, for example, and draw it to a display.
JUDGE BEGLEY: One last question about the
'690 patent, claims 1 and 2. I believe it's the '690 patent.
Why can't the rendering engine support both the determining
and the displaying step?
MR. HELGE: Your Honor, I think that has to
come back to the actual language of claim 1, step B, the
determining step, which is that the determining is determining
10
something to be displayed.
11
And so if we say the rendering engine can be both
12
determining and displaying, I think it is a little bit convoluted
13
in the sense that it is asking the rendering engine to determine
14
what is sent to itself.
15
And that's not necessarily how the rendering
16
engine works. The rendering engine simply goes to these
17
tables, these references, pulls the data and then renders a view
18
for the avatar.
19
JUDGE BEGLEY: I think you have said that that
20
also involved, the rendering of the view also involved only
21
showing the avatars in the view?
22
MR. HELGE: That's right, Your Honor, that's
23
right. I ma y be getting a little far afield of the question. I
24
apologize.
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In terms of the rendering engine, our expert said
that the field of view is generally the first step of the
rendering engine. We don't dispute that. But the field of
view would occur within the rendering engine.
JUDGE BEGLEY: Okay.
JUDGE EASTHOM: Like some comparing of table
7
8
9
values or something, is that right?

MR. HELGE: Yeah, Your Honor, so, for example,
the server is going to send values. The server is going to send
10
position, orientation and there could be other values being
11
sent. If you have a new avatar entering a room you ma y get,
12
you know, new graphical data for that avatar.
13
And then that gets dropped into the remote avatar
14
table. I think it's 114. There is going to be other tables.
15
Obviously you're going to need to know your own avatar's
16
position, if you are the user, and the rendering engine is just
17
going to receive that data, run calculations, and then
18
effectively what we call draw it in the display.
19
JUDGE EASTHOM: That's the filtering basically
20
that is called out in claim 2. I know you don't have a position
21
on that. But I'm just trying to keep it straight. You don't
22
have to answer that.
23
24
Well, if you would answer it, is that what you are

saying, is that the kind of filtering that you are talking about?
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MR. HELGE: Yes, Your Honor, in terms of step
2(d), I'm sorry, step D of claim 2 of the '690. Right, there is a
displaying based on the orientation of the first user's avatar.
It is not a separate computation. It is just the rendering
engine collects this data. It has the, you know, the point of
view, the X, Y, Z of your avatar, and it just runs computations
and spits out a value. It spits out an image.
MR. HELGE: Judge Begley, I believe you asked
10
earlier to Bungie a question about the '856. And so before we
11
leave the determining type claims it may make sense for us to
12
hit that question as well.
13
And, again, I'm aware of the Board's interpretation
14
of the determining step on the '856, according to the Board's
15
Institution Decision, saying that it could be occurring at the
16
client, it could be at the server, or it could be both.
17
This question was posed to both of the experts
18
during deposition. They both agreed that their read of that
19
claim was that the determining step was occurring at the client
20
side. Now, we obviously have the antecedent basis, the
21
received positions, the received positions language in step
22
1(b) of the '856 patent, which finds antecedent basis from step
23
A.
24
25
But I think perhaps another thing that may have

crossed their mind was just the idea of what is to be
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displayed. If you read the specification, the server doesn't
really know what the client is going to display. The server
just has data for N avatars and then it is going to send them.
That's not really a determination of what the client
is going to display. It is just a determination of N, N values.
So I think that may be additional support for why that
determining step occurs at the client side.
8
9
10
JUDGE BEGLEY: I'm sorry, can you explain that

again?
MR. HELGE: Absolutely, Your Honor. So we
11
have -- it is actually fairly similar language to step 1(b) from
12
the '690 patent, although it doesn't state clearly that the
13
determining is occurring at the client side.
14
So the Board interpreted claim 1, the determining
15
step of the '856 patent, as potentially occurring at the server
16
or at the client and instituted with that viewpoint.
17
During deposition, we asked both experts who both
18
confirmed their reading of the determining step as occurring
19
at the client side, rather than the server. Now, it is relevant
20
because Funkhouser '95, I think we've acknowledged, has a
21
limited messaging coming from the server down to the client.
22
But the idea of determining what is to be displayed, so, for
23
example, what is going to a rendering engine, is not a decision
24
that occurs at a server. It is simply occurring at the client.
25
The server is going to have N, values for N avatars.
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JUDGE BEGLEY: But why can't it be at the
server? Well, if the server is receiving the positions from all
of the clients, all of the different clients and avatars, why
can't it be at the server?
MR. HELGE: Your Honor, I don't believe that the
server has any input into, from the data that the client
receives, what is actually going to be sent down to the
rendering engine.
The server is really -- it is sending data according
10
to some conditions. It ma y be based on the N values, and N
11
ma y be, you know, a portion of all of the avatars in the world
12
or it ma y be a portion of all of the avatars in a space, but it is
13
going to send N data to the client.
14
The server doesn't know, and probably doesn't
15
care, which of those N actually get displayed. It is just going
16
to give data to the client to then populate these tables. The
17
same thing at the client side. It can filter down to N prime,
18
but it is only the client that is actually making the decision
19
about what it is going to send to the rendering engine.
20
JUDGE BEGLEY: I think we are talking about
21
this in a more abstract sense rather than looking at the claim
22
language.
23
24
Can you explain to me why, with the claim

language that is in claim 1 of the '856 patent, why that doesn't
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include the server making the determining of the set of avatars
to be displayed?
MR. HELGE: Your Honor, I think to get to the
server doing that you would have to somehow connect the
server to the decision of what is going to be displayed. And
that simply is a decision that doesn't occur at the server end.
I think the argument that I believe we presented in
our preliminary response really dealt with that idea of
received positions and our interpretation that the only
10
reasonable interpretation of received positions tied back into
11
what is occurring in step A.
12
Now, I know the Board --
13
JUDGE BEGLEY: And why doesn't the server
14
have access to the received positions? Isn't it receiving
15
positions from all of the other avatars?
16
MR. HELGE: It is, Your Honor, although I think
17
that the way we read the claim was that the received positions
18
don't become received until they have been received by the
19
client. And that comes from --
20
21
22
JUDGE BEGLEY: Why couldn't they become

received when they become received by the server?
MR. HELGE: That's a good question, Your Honor.
23
I think the best answer, the best answer that I know of is that
24
step A actually is the step of receiving. The step of receiving
25
that occurs in the claims is the step of receiving at the client.
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And so it would force us to say that there must have been
received positions in existence before the client got them.
That ma y be -- I think that ma y be, you know, if
we are willing to parse through, that may be a broadest
reasonable interpretation, perhaps, although I think under
Phillips that the correct interpretation would be that the
received positions become received when received at the
client.
JUDGE BEGLEY: And since you were just
10
discussing the specification, can you explain your argument
11
when N is equal to N prime, how does that impact your
12
analysis -- or where N is less than N prime, instead of equal,
13
where N is less than N prime?
14
MR. HELGE: Right, so your question is
15
effectively that the client is not doing any further filtering. Is
16
that right?
17
JUDGE BEGLEY: Yes.
18
MR. HELGE: Right. I think the same question
19
comes into play. The server doesn't necessarily have to know
20
the value of N prime. The server is just sending N values.
21
Now, the client, I believe the specification talks
22
about the idea that the client can set N prime locally. And
23
when it talks about sending N prime back up to the server, it
24
is possible, the server doesn't have to know N prime. The
25
server can simply know N.
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And so the idea of whether N prime is greater, less
than or equal to N, the server simply has data that it is going
to send down.
And it may i mpact, it may i mpact -- which was
Your Honor's other question to Bungie at one point -- it may
impact what gets displayed, but it is not necessarily the step
of determining, what then goes into the rendering engine.
If it is acceptable I will proceed up to slide 80,
and we can address the teleporting and perspective change
10
slides.
11
Your Honor, in slide 80 we've quoted from the
12
'501 patent, claim 7, and I believe claim 16 is another one of
13
these claims, and it is the idea of an avatar teleporting from
14
the first virtual room to a second virtual room.
15
We also have the '998 patent, and this is claim 1 in
16
relevant part, the final element, which is the switching, the
17
rendering from one perspective to another perspective. Claim
18
2 of the '998 has similar perspective switching. And we've
19
dealt with these two ideas in the same manner.
20
Going back to Funkhouser '95, which was the
21
primary reference in some of these grounds of institution,
22
Funkhouser '95 has a very particular way to manage message
23
traffic, which is that the avatar updates are going to be sent
24
for other avatars that are visible or potentially visible to the
25
user.
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Now, potentially, as I talked to Dr. Zyda, he
confirmed with me that potentially visible means it could be
visible in a frame or two.
Now, what teleporting does is it makes everything
potentially visible, because everything, when you teleport, is
then potentially visible within a frame or two. If I were to
teleport from here down to the USPTO lobby, suddenly that's
where I am. And when you look at Funkhouser's structure, the
limited number of messages that it is sending down, there is a
10
delay. There is time. There is time that you need to then load
11
up the other avatars from the new location.
12
There are two ways of handling that and we talked
13
through this with Dr. Zyda. One option was that the teleport
14
delays, and you wait, and you have a dark screen until the
15
client can download all the information from the new location
16
and then display it to you, and there is a delay for that, there
17
is. The other option is you can teleport to the USPTO lobby
18
immediately and then, as the client downloads the other avatar
19
information, they start popping into the screen.
20
And Dr. Zyda was clear -- and this is on slide 81 --
21
Dr. Zyda was clear with me that neither one of these options
22
are good in the sense that they don't maintain the reality
23
aspect of the virtual reality. When asked about these types of
24
schemes, one of the things he responded to me was that, yeah,
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people get pretty unhappy when responding to a sluggish
response.
He also agreed that --
JUDGE CHUNG: Counselor, how do you respond
to Dr. Zyda's testimony that it's only a 1.33 second delay, and
also with Mr. Pesce's testimony that one second would be
acceptable, two seconds would probably be acceptable for a
delay, but anything more than five seconds would be
unacceptable?
10
MR. HELGE: So I will come back to the idea that
11
when these ideas were suggested -- excuse me, when Bungie
12
submitted the petition proposing, for example, the changes
13
that happened, the perspective changes that happened in the
14
Marathon game, what they were touting as a basis for that
15
change was user enjoyment.
16
Now, obviously with high-end equipment there is
17
probably not going to be much of a change. But who is the
18
user that they are talking about? And if we talk about the idea
19
of taking the user with a 14.4 kbs modem connection or a 286,
20
who does have a delay, we are talking about people that, as
21
Dr. Zyda said, are going to get pretty unhappy.
22
It comes down to the question of who is a user and
23
who is the user trying to gain enjoyment? We're not
24
necessarily, again, from Bungie's point of view, they weren't
25
necessarily talking about a user like Dr. Zyda who is going to
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be in a lab, a well-funded lab at the Naval Postgraduate
School or USC with silicon graphics workstations and a 2
megabit per second connection. They are talking about users.
We are talking about people who are going to play the games
and enjoy the games.
Now, if we come back to the river bank on the
obviousness question, the obviousness analysis, this is an idea
where there is Wexelblat, which talks about teleporting. Now,
ma ybe that's a suggestion. That's a suggestion for the
10
POSITA to step off the bank onto the first rock.
11
BUT if the POSITA turns around, and, again, the
12
underlying basis for Funkhouser '95 is to limit the message
13
traffic, not send all of these things, so the POSITA turns
14
around and the entire river bank has washed away because we
15
have defeated the purpose of Funkhouser '95.
16
In terms of the timing, in terms of the motivation
17
to do these things, again, Marathon talks about user enjoyment
18
or the motivation to make the changes from Marathon is user
19
enjoyment. And we have to consider who the user is and
20
would that user have a 1.33 second delay.
21
It is not what Dr. Zyda suggested when we talked
22
about the jarring reaction or when you don't want to do certain
23
steps.
24
JUDGE CHUNG: The Funkhouser reference,
25
though, seems to use a faster connection speed. So why
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wouldn't implementing the Funkhouser reference with the
faster connection speed minimize delays?
MR. HELGE: Your Honor, I think it comes back
again to who the user is. In terms of user enjoyment, was
Funkhouser doing these things for user enjoyment? And why
would Funkhouser want teleportation in his system?
It wasn't necessarily for research purposes, right,
user enjoyment comes back down to the people that Worlds
was speaking to with its technology, people in the home,
10
people in education, people in schools who were doing it for a
11
purpose other than research, or perhaps military funding.
12
In terms of, you know, if we were to set the bar at
13
what Funkhouser had in the lab or what Dr. Zyda had in the
14
lab, do we have a connection to say that, yeah, that's where all
15
of the persons of ordinary skill in the art were operating?
16
Were they operating with the users? Were they more familiar
17
with what the users were doing?
18
And I think Funkhouser '95, like Dr. Zyda, is
19
living or working in a situation where everything is fast.
20
That's just what it is in terms of their setups.
21
JUDGE CHUNG: Your argument is that
22
combining Funkhouser with those other teleportation
23
references, I think you said Wexelblat, would create a delay.
24
So that's one part of your argument.
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And now you are saying that, now you are trying
to say for the specific type of user. That seems like an
entirely different argument.
Focusing back on whether or not Funkhouser in
combination with some secondary reference, say in this case
Wexelblat, would that create a delay, that that would be
unacceptable to -- that would be unacceptable to the specific
type of user if they were using Funkhouser as a teaching?
MR. HELGE: Your Honor, I think we can only
10
determine whether it would be acceptable or unacceptable if
11
we understand the confines in which that user is operating. If
12
we say it's Funkhouser, if we say Funkhouser is the user and
13
Funkhouser is doing this for enjoyment, that's not really true
14
to Funkhouser. Funkhouser was doing research and had very
15
high-end equipment in order to do that research.
16
If we are looking, like Bungie said, at the user
17
enjoyment, we have to look at what the users had. Worlds
18
talks about 14.4 kbs time. And that's going to be fairly
19
lengthy. We have got this talking about a little bit more of a
20
lag.
21
Certainly with Dr. Zyda's equipment or with
22
Funkhouser's equipment, the lag would have been shorter with
23
that high-end equipment.
24
JUDGE CHUNG: Okay.
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1
2
MR. HELGE: But they weren't necessarily

operating for enjoyment. It is a different purpose.
But I think if the user enjoyment is the motivation,
then it requires a looking at the user's equipment at the time.
And that wasn't necessarily what Dr. Zyda had or what
Funkhouser had.
7
8
Your Honors, I know I'm probably coming up a

little short on my time.
JUDGE CHUNG: You have until 3:07.
10
MR. HELGE: 3:07. I think we need to discuss the
11
construction of avatar. I apologize for the bouncing around.
12
But I'm going to go back to, I believe it is slide 18.
13
So as Your Honor noted this morning, the crux of
14
the dispute here is really a 2-D versus a 3-D. Actually I think
15
it is more appropriately said 3-D versus open-ended
16
construction of avatar.
17
As the District Court noted, they construed the
18
term to be 3-D, three-dimensional graphical representation of
19
the user. And that's the interpretation that Worlds presents
20
here today.
21
Well, that term appears in each of the claims or at
22
least either directly or through dependents. And the focus of
23
the dispute is really the difference between the
24
three-dimensional and whether it is silent.
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1
2
3
4
JUDGE CHUNG: Sorry to keep belaboring this,

but could you refer to the slide number, please?
MR. HELGE: Yes, Your Honor, my apologies.
19, slide 19.
JUDGE CHUNG: Thanks.
JUDGE BEGLEY: From your perspective, would
it be sufficient for us to just address whether an avatar is
required to be three-dimensional? You seem to agree on
everything else about the definition or the construction.
10
11
12
MR. HELGE: Absolutely, Your Honor. That is

definitely suitable for Worlds' view.
Now, Judge Easthom, earlier this morning you
13
mentioned that the District Court had come down and said it
14
had to be three-dimensional. And we think that's correct.
15
And we think that there are a couple things from that
16
construction, and that order, that are crucial to the outcome.
17
One is obviously column 3 -- and this is slide 20 --
18
column 3, lines 15 to 17 of the '690 patent. In the preceding
19
sentence we have the term "avatar" is in quotation marks.
20
And then we have a reference to each avatar 18 is a
21
three-dimensional figure chosen by a user to represent the
22
user in the virtual world.
23
And, Judge Chung, I know earlier you mentioned
24
the idea that there was a reference to figure 1(b) according to
25
the present invention. We don't think you necessarily even
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have to get to the question of whether that's according to the
invention because what we have here is fairly close to
lexicography. And I think that the District Court judge
looked to that as practically lexicography.
In addition to that the District Court --
JUDGE EASTHOM: But I don't understand. I
7
8
9
mean, isn't that just with respect to figure 1?

MR. HELGE: Your Honor, I think what is going
on here is, because it is in quotation marks in the previous
10
sentence, the avatar is, I think that's an indication that there is
11
a definition coming.
12
And I think, you know, if we didn't have 18 in the
13
following sentence, if it just said each avatar, instead of each
14
avatar 18, I think there would be very little question of
15
whether it is definitional.
16
JUDGE EASTHOM: But 18 isn't only in figure 1,
17
right? Don't you have avatars in other figures? Maybe you
18
don't. I don't know.
19
MR. HELGE: I think it is only figure 1.
20
JUDGE EASTHOM: Just in figure 1? I guess
21
what I'm getting at is, I don't understand, how can that figure,
22
the whole figure be, you know, the invention?
23
In other words, you would have to have everything
24
in the figure be the invention. How do you pick the avatar?
25
You are saying it is because of the sentence, I guess.
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MR. HELGE: That's really I think the sentence.
That's why I say I don't necessarily -- I' m not saying that
figure 1 is the invention but I do believe because of the
quotation marks and because of the way the following
sentence is written, it was intended to be an indication that
there is a definition coming.
JUDGE CHUNG: So how do you respond to the
sentence in column 3, for example, in the '690 patent, there
are going to be different line numbers in each patent, but in
10
the '690 patent, lines 2 and 3, figure 1 is an example of what
11
such a client might display.
12
MR. HELGE: Well, I think, of course this is an
13
example because, one, we have got an example of the avatar, a
14
penguin. Another thing, an example of the view because we
15
are looking at a specific part of the spaceship as the view is
16
showing. You are looking at a specific way that the --
17
18
19
JUDGE CHUNG: So you are conceding that figure

1 is an example?
MR. HELGE: I think it has to be an example, yes.
20
I think figure 1 -- the invention is certainly not, from our
21
perspective, you know, a view of two penguins on a spaceship.
22
JUDGE CHUNG: I'm sure you are going to
23
eventually talk about this, so, I mean, if you are then I
24
apologize for hijacking your spiel right now, but how do you
25
address the claim differentiation issue, because if you are to
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take the definition that avatar is a three-dimensional
graphical -- I don't want to butcher what you are saying
here -- well, a three-dimensional graphical user
representation, I think that's what it was, I don't have it right
in front of me, and if you were to take that definition and plug
that back into the '501 patent and also plug that back into the
other patent that recites 3-D avatar, wouldn't that definition,
once you plugged that into avatar, when it is already preceded
with the phrase three-dimensional, wouldn't that render
10
11
three-dimensional superfluous?
MR. HELGE: I think it has to, Your Honor. I
12
think it has to. I don't think a claim in the '501 patent, again,
13
filed 13 years after this specification was written, should alter
14
effectively, one, which is practically the definitional sentence
15
here dealing with figure 1.
16
Also, with what the District Court judge said, I
17
think correctly, is that the heart of the invention is that you
18
have these complicated avatars. It is not simply an image. It
19
is not simply a picture. This entire idea of removing avatars
20
from the screen or limiting your avatars through crowd control
21
is driven by the complexity of what an avatar is.
22
JUDGE CHUNG: So along those lines, if Patent
23
Owner -- if your client later claimed that as three-dimensional
24
avatar, or I'm not sure which came first, with the '501, if your
25
client in one breath said that it is a three-dimensional avatar
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and specifically enumerated three-dimensional in some of the
patent claims, but in other ones they were silent as to an
avatar being three-dimensional, wouldn't claim differentiation
lead us to look into the spec to see if there are any
differences?
The test would be, or the presumption there is you
look -- there is a difference between the two so they mean
different things, then you go to the spec to see if there is a
difference, and I believe in the spec it does recite
10
two-dimensional as one of the possibilities.
11
MR. HELGE: Your Honor, in terms of the
12
two-dimensional aspect, I definitely want to come back to that
13
because that is really, perhaps, what Bungie is hinging on.
14
But in terms of claim differentiation, this isn't a
15
situation where we have, for example, claim 1 saying an
16
avatar, and then claim 2 depending from claim 1 saying, you
17
know, the device of claim 1 wherein the avatar is
18
three-dimensional. It is an entirely different patent. Yes,
19
they have the same specifications, but because of the different
20
patent --
21
JUDGE CHUNG: So you are saying that claim
22
differentiation can't apply across different patents even
23
though they are in the same family?
24
25
MR. HELGE: Well, Your Honor, I'm not

necessarily willing to go that far but I will say that I don't
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believe that claim differentiation should overcome what is a
clear indication in the specifications of a desire to be
claiming three-dimensional avatars in every instance that the
avatar is used.
JUDGE CHUNG: Is it a clear limitation if it talks
about it in a two-dimensional sense in the spec and it also
talks about it as an example?
8
9
MR. HELGE: I think it is a clear differentiation,

Your Honor. I will turn to the -- here we have, this is on slide
10
21, again, I think we have to look at the specification in its
11
entirety. Here is one instance where we're talking about the
12
avatar images being three-dimensional and looking different
13
in most cases from different angles.
14
Now, when you talk about three-dimensional, I
15
believe that is referring to an example of how the avatar
16
images could be stored as two-dimensional panels. But even
17
in that case we are talking about panels viewed from different
18
directions. I think what you have is when you are looking at
19
them from different angles, if you have a function of 3-D of
20
200 or 360 degrees, right, you have the ability to walk around
21
this avatar and see them from a different point of view as you
22
go around.
23
Now, there can be a true 3-D rendering or because,
24
again, as Judge Easthom said, everything is getting projected
25
onto a 2-D screen, there is a possibility that you want to
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shorten the process, for example, make it faster to get to what
you are trying to get to.
So I'm on slide 22 and this is exactly what you are
talking about, the 2-D: "The typical entry in the database
comprises N two-dimensional panels, where the i-th panel is
the view of the avatar from an angle of 360 times i/N
degrees."
But, now, obviously Bungie hasn't proposed a
construction of 3-D, the question of whether the appearance of
10
these panels to a user is a 3 -D avatar, but certainly that's what
11
they were trying to achieve with this, even with this shortcut,
12
and with the description that each avatar is three-dimensional.
13
So we think that 3-D is the correct construction.
14
JUDGE EASTHOM: So just to get it straight, was
15
that correct, or did you agree with the question that your
16
friend answered affirmatively, that this just simply means that
17
you are looking at, say, the front of the penguin and then you
18
look at the side of them ma ybe in another frame and then you
19
look at the back of the penguin and that gives you this 3- D
20
perspective?
21
MR. HELGE: That's what we think you would get.
22
We think you would get that by the way that they are
23
describing it here.
24
25
JUDGE EASTHOM: How does that differ from the

other reference we were talking about with the --
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JUDGE CHUNG: Durward?
JUDGE EASTHOM: Durward, thank you, yes.
Thank you, Judge.
4
5
MR. HELGE: Here is how Durward -- and, I

apologize, I've called it "Durward" for a while.
6
7
JUDGE EASTHOM: That's fine. I didn't

reme mber the name.
8
9
MR. HELGE: It's going to be hard to break that

habit. The way they talk about it, they talk about aspects of
10
the body, the arms, the fingers. There is no discussion of
11
dimension at all. Durward is silent on whether it's 2-D or
12
3-D.
13
JUDGE EASTHOM: Well, it says it is in a 3-D
14
space, but are you saying it doesn't give you a different
15
perspective of the avatars in Durward when you are in the 3-D
16
space or you are saying it is silent about that, too?
17
MR. HELGE: I think it is silent on it, Your
18
Honor. Even the portions that Bungie has quoted onto the
19
screen, you have the portions which say nothing about three
20
dimensions for the virtual beings.
21
Now, I agree, they do say three-dimensional space.
22
They say nothing about the virtual beings being
23
three-dimensional. Now, from a strict claim -- or, excuse me,
24
from a strict unpatentability analysis, you know, anticipation
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or obviousness, we have to say, okay, it is not in there
expressly, so what else can we go to?
We go to inherency. Is it inherent? It is not
because our expert Mark Pesce said, no, this is perfectly
consistent with 2-D. So what do you have left? You have a
103.
JUDGE EASTHOM: We have what's implied.
JUDGE CHUNG: And also paragraph 167, Dr.
Zyda's testimony.
10
MR. HELGE: Right, where he is opining, and so
11
now you have effectively different viewpoints. We have two
12
experts saying the opposite thing.
13
But at the heart of it the reference is silent. And
14
Bungie cannot meet its burden of persuasion on that reference
15
and on that construction.
16
And at least here I think what we have is, one, a
17
fairly clear definitional-type sentence in column 3, figure 15
18
-- excuse me, column 3, lines 15 to 17 of the '690 patent, for
19
example. We have a discussion in the slide I just had up
20
previously, slide 21, that avatar images are three-dimensional
21
and look different in most cases from different angles.
22
And then slide 22, the way that they look different
23
is, for example, as a typical entry, to view the angle -- or to
24
view the avatar with two-dimensional panels.
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JUDGE EASTHOM: How did the District Court
judge treat the claim differentiation argument? She said it
wasn't only a presumption.
4
5
MR. HELGE: She didn't find it persuasive, Your

Honor.
MR. HELGE: She had no problem. She felt that,
you know, the heart of the invention, she said, the heart of the
invention really is about three-dimensional avatars and trying
10
to display them, and she felt that that outweighed any problem
11
with the '501 or the '998 patent using that term
12
three-dimensional avatar.
13
JUDGE CHUNG: So why couldn't -- I'm just
14
having a hard time wrapping my head around this -- why put
15
in three-dimensional in some of those patents when the
16
avatar, according to your position, when the avatar already
17
imports three-dimensional into the definition?
18
MR. HELGE: Your Honor, my best answer to that
19
is sometimes people think that they are trying to be clear
20
without realizing that they are muddying things up. And I
21
think in that case, avatar, why not throw a
22
three-dimensional into it and just clear it up.
23
JUDGE CHUNG: And as a follow-up, how do you
24
respond to the Microsoft Computer Dictionary definition,
25
which I believe is Exhibit 1010 in most of the cases, that
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omits whether or not avatar is two-dimensional or
three-dimensional, rather it is more not committing to a
specific dimension.
MR. HELGE: Your Honor, I think the answer to
that is very simple. It is extrinsic evidence. And it only
comes into play if you can't answer the question with the
intrinsic evidence. But here the intrinsic evidence is clear,
the District Court is clear, the heart of the invention, the
correct construction comes from the specification.
10
JUDGE CHUNG: I understand your position that
11
avatar has -- that the record is clear intrinsically that the spec
12
defines it as three-dimensional.
13
But in the hypothetical scenario where the spec,
14
where the spec was not clear about whether or not avatar was
15
three-dimensional, would you agree that that extrinsic
16
evidence, which you just said was the Microsoft Computer
17
Dictionary, that would apply, correct?
18
MR. HELGE: Your Honor, I don't agree because
19
that's not all of the extrinsic evidence we have here. And I
20
think what is very telling in this case, again, you know, a lot
21
of times we have to look at not only what is there but what is
22
missing.
23
And so Mark Pesce, our expert, provided a
24
rundown of the history of the term avatar, which really only
25
came into play in the early 1990s. This is just my
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recollection from the book, the Neal Stephenson book, Snow
Crash. So we are talking about a very short period of time
when this term comes into play it starts to become
implemented.
We have Mark Pesce talking about the history of
3-D rendering in home computers, direct 3-D versus specific
hardware-based. And we have a lot of technical advances
occurring over a very short time.
Mark Pesce testified that somebody reading the
10
Worlds patents at the time of their writing, you know, as of
11
November of 1995, would have understood this to be 3-D.
12
Bungie's response was to tell us that Mr. Pesce's
13
story is not credible, you can't understand it, and that you
14
can't believe it. That is self-serving, of course. But what you
15
don't see with their reply is Dr. Zyda clearing the record,
16
clearing up the situation. I think the logical answer when a
17
party says, hey, that's not right, you are laying out the facts
18
wrong, is to show up and clear it up.
19
20
JUDGE EASTHOM: What's the Microsoft, can

you clarify, what date is that, the Microsoft?
21
MR. HELGE: That's 1997, I believe.
22
JUDGE EASTHOM: So, I mean, doesn't that
23
contradict what he's saying? Does he have anything to back
24
up his position, your expert?
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1
2
MR. HELGE: Well, I think he tells a bit about the

development.
JUDGE EASTHOM: Is that development, is that
story documented? Is their corroboration, any technical
documents that sort of corroborate with his story?
6
7
MR. HELGE: No, Your Honor, I would say that

there isn't.
MR. HELGE: But, again, I think that when we
10
come back to the foundation of this --
11
JUDGE EASTHOM: So that's the question, I
12
mean, if there's a plain meaning, and I start over sometimes, it
13
sounds like you are saying that there is only one plain
14
meaning in 1995 that avatar is 3-D, and that your spec just
15
follows that, according to your expert.
16
But if there are two plain meanings, then would
17
you have to be -- you would have to be a lexicographer, right,
18
is that correct, to just limit your construction to one of those
19
two?
20
MR. HELGE: Your Honor, if there are two plain
21
meanings or there is a dispute on how you come out and there
22
is no clear answer in the spec, I think what the Federal Circuit
23
has told us from Phillips is that extrinsic evidence is out
24
there. If you have it in the record you can look at it and you
25
can learn from it, but you can't contradict what is in the spec.
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And I would say that if you were to interpret
according to a Microsoft Dictionary definition set in 1997,
and that contradicts both the District Court order under
Phillips as to what an avatar is, and contradicts what is in the
spec and clearly intended to be captured in the spec, then I
don't think you can look at the Microsoft Dictionary.
JUDGE EASTHOM: So you don't have to use
lexicography to get to your position? You don't have to be a
lexicographer?
10
MR. HELGE: No, you don't. I don't think we do,
11
Your Honor. I think, again, I think that with column 3, lines
12
15 to 17, you are awfully close.
13
14
MR. HELGE: You are awfully close. But even
15
read in full, the specification of the '690 I think makes very
16
clear that they are going for a 3-D and that causes all of the
17
problems that they are trying to solve, which is to limit the
18
avatar data that is getting sent. I mean, the magnitude of data
19
that gets sent in a 3-D type avatar versus a 2-D, it is pretty
20
dramatic. I mean, it drives I think what is happening again at
21
the heart of the Worlds patents.
22
23
24
25
JUDGE BEGLEY: For slide 22, the quote you

have from column 7, can N be one?
MR. HELGE: Well, Your Honor, clearly in this
quotation here it doesn't say that it can't be one, but we do
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talk about two-dimensional panels. There is one instance in
the specification where I believe they say that the number of
two-dimensional panels could be eight, in an example.
JUDGE BEGLEY: But it doesn't exclude 1?
MR. HELGE: Your Honor, you are right, there is
not a clear disclosure in the specification to say N cannot be
one, although it does talk about panels, and I think what they
are saying, N two-dimensional panels, at the reasonable
minimu m I think you would have to say it's two.
10
11
JUDGE EASTHOM: Well, even if you have two,

do you have to display both of them?
12
MR. HELGE: Well, Your Honor, you display them
13
based on rotation, based on your position relative to that other
14
avatar.
15
JUDGE EASTHOM: Correct, I understand that,
16
but that's how you get your 3-D, but if you only display one
17
then you don't have 3-D, right?
18
19
MR. HELGE: I think it depends on how the panel

is portrayed, Your Honor.
20
For example, if it were a penny, right, if the avatar
21
were a penny, I know they had -- actually the way the Worlds'
22
worked, is they really, in the Worlds Chat, they had all sorts
23
of different things. They had a fish. They had all sorts of
24
crazy things.
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But, I mean, if you had a very flat fish and you
could see one side and you could walk around and see the
other side, they ma y not have had an avatar to cover the front
or the back. I don't know. But I don't think that precludes the
possibility of that fish or penny or something thin still from
being in a 3-D appearance or being portrayed as 3-D,
portraying some sort of depth through arrangement of the
graphics.
JUDGE EASTHOM: Maybe I don't understand
10
then. I thought that the way this worked is you would have
11
two panels to get 3-D, you have to have at least two panels to
12
get 3-D, because each of those panels give you a different
13
view of whatever avatar you are representing, so the front of
14
the penguin is one panel and the rear of the penguin is the
15
other panel?
16
MR. HELGE: That's right, Your Honor.
17
JUDGE EASTHOM: So then you would have to
18
19
display both of them, I guess, to get 3-D, right, at some point?

MR. HELGE: I see what you are saying, Your
20
Honor. The only reason I think that -- the only reason that
21
there ma y be a different reading of that, Your Honor, is here
22
they say where the i-th panel is the view of the avatar from an
23
angle of 360 times N -- or, excuse me, times i/N degrees.
24
JUDGE EASTHOM: Is that "i" over N? I'm sorry.
25
MR. HELGE: Yes.
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JUDGE EASTHOM: Oh, okay. So if i is 1 and N
is 2 then you get a view from 180, and if i is 2 and N is 2 you
get a view of range of 360.
MR. HELGE: I think that is right.
JUDGE BEGLEY: Do you explain in your briefing
what three-dimensional means? What is required to be
three-dimensional?
8
9
10
11
12
13
14
15
16
MR. HELGE: We don't, Your Honor. I don't

believe that is in either Bungie's petition or in our papers.
JUDGE BEGLEY: But you are the one asking us
to limit it to three-dimensional, right?
MR. HELGE: True, Your Honor, although I think
Bungie has the burden of persuasion in this case.
JUDGE CHUNG: Do you have an interpretation of
three-dimensional?
MR. HELGE: Your Honor, I think the way that the
17
patent talks about three-dimensional would be my
18
interpretation. So, for example, when they say each avatar is
19
a three-dimensional avatar, I would accept that to be whatever
20
three-dimensional meant at that time.
21
In the previous slide here, slide 21, avatar images
22
that are three-dimensional look different in most cases from
23
different angles. I think what they are talking about here is
24
you can create a three-dimensional appearance by having
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different views around the avatar, and as you walk around you
get different views.
I don't believe that these usages of
three-dimensional are inconsistent with probably what was
being used at the time.
And, Your Honor, I have one -- actually, Judge
Easthom, I have one other issue that I want to raise based on
something the client said earlier this morning about Durward
and, that is, about Durward having 2-D versus 3-D virtual
10
beings. There was one phrase that counsel made which is
11
letting logic dictate.
12
And I would just throw out that I think the Arendi
13
case v. Apple that just came out from the Federal Circuit
14
about nine days ago deals with commonsense, the use of
15
commonsense in IPRs, and I think -- and in obviousness
16
really -- and I think that applies as equally to this idea of
17
letting logic dictate.
18
Again, Durward is silent on the number of
19
dimensions and virtual beings and whether it is logic or
20
commonsense or something that is not disclosed, something
21
that is having to be read in, whether it's through inherency or
22
some i mplicit disclosure. I think that -- I would say that
23
letting logic dictate is not the right approach for deciding
24
whether that disclosure is there in Durward.
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JUDGE CHUNG: I believe Dr. Zyda in paragraph
167 said that because those objects are in a three-dimensional
space, then they would be three-dimensional avatars as well.
Again, how do you respond to that?
MR. HELGE: Your Honor, my response to that,
one is, again, Durward is not -- is silent on that issue. What
we're really doing is, if we need Dr. Zyda to explain what is
in Durward, it is not a 101. We're really getting into a -- or,
excuse me, a 102. We really get into a 103 area.
10
We don't have explicit disclosure. We don't have
11
inherent disclosure. Mark Pesce, our expert, said these are
12
consistent with two-dimensional. So now it becomes an issue
13
of whether Dr. Zyda and Mark Pesce agree. Clearly they
14
don't. But at the end of the day Bungie has the burden of
15
persuasion and they can't carry it with Dr. Zyda filling in
16
those blanks.
17
If I can, if I can jump briefly to -- let's see, I only
18
have about 10 minutes here. I would like to jump briefly to
19
this question of whether Funkhouser '95 is prior art to certain
20
claims. And we have made this argument on only a limited
21
number of claims. But Bungie takes issue with our lack of
22
inventor declarations.
23
Obviously we have Mitra Ardon in the record
24
refusing to sign the declaration. I would encourage Your
25
Honors to look at that entire declaration. The paragraph that
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Bungie put up on their slide, it includes a portion of
paragraph 4 of the declaration from the attorney.
If I could please have the ELMO. Your Honor,
this is slide 35 from Bungie's presentation. And what has
been highlighted in the middle here is paragraph 3, that Mr.
Ardon refused to sign the declaration stating his belief that
the claims did not recite patentable subject matter.
8
9
What is interesting and what is actually more

telling is if we look down here at paragraph 4, this reads, and
10
I will read it here: After explaining to him, i.e. Mr. Ardon,
11
the legal test for novelty and nonobviousness, I requested that
12
Mr. Ardon provide an example of prior art which would render
13
the claimed invention unpatentable, but he could not cite any.
14
Now, the following paragraph on page 5 gets into
15
the fact that Mr. Ardon was at this time working at a
16
competing company and was reluctant to participate in this
17
process.
18
JUDGE EASTHOM: Didn't -- I don't know. I
19
didn't look at the record. I was curious about this. But when
20
he filed his patent application doesn't his oath -- didn't he file
21
an oath with that?
22
23
24
MR. HELGE: He didn't, Your Honor. So what

happened -JUDGE EASTHOM: Oh.
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MR. HELGE: -- was three of the four inventors
filed declarations. Now, we have a question of is there
evidence of conception in this case? Of course. There is
always evidence of conception, at least with respect to the
three inventor declarations, or, in this case, three inventor
declarations that were signed and filed with the original
prosecution. And they attested that this was the claimed
invention.
9
10
JUDGE EASTHOM: Are those original oaths in

the record here?
11
MR. HELGE: I would have to look at that. I
12
actually don't know offhand. I do have the pages and I'll
13
check.
14
15
16
JUDGE BEGLEY: But does that show conception

as of April of 1995?
MR. HELGE: Well, they certainly were signed
17
later than that, Your Honor. They were certainly signed when
18
the provisional was filed or perhaps even with the
19
non-provisional.
20
21
22
JUDGE BEGLEY: So how does that help antedate

Funkhouser?
MR. HELGE: Well, Your Honor, I think what we
23
are getting to is the question of whether inventor declarations
24
are needed at all. And what I do is turn to the following side
25
from Bungie, slide 36 from Bungie, where they have cited to
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this Board the Herz case. And what they have quoted here is
something that this case says but they didn't tell you what
Borror v. Herz actually did.
What they actually did was they reversed the
Patent Office for drawing a negative inference where there
were no inventor declarations. Borror v. Herz does not stand
for the proposition that there has to be an inference, a
negative inference where the inventors' declarations are not
submitted.
10
Borror v. Herz actually stands for the proposition
11
that any inference has to be consistent with the totality of the
12
circumstances. The totality -- and I would encourage Your
13
Honors to look at this case and to look at pages 575 and 576.
14
15
16
JUDGE EASTHOM: So that's dicta that they

quoted?
MR. HELGE: This is actually -- this actually
17
comes in early where they are discussing the laws of evidence
18
and whether there is a negative inference. But when you get
19
down to pages 575 and 576 they talk about what the Patent
20
Office actually did in the interference and they sent the case
21
back to the Patent Office because there was an improper
22
negative inference that they had held.
23
24
So let me go back to the screen, please. So I'm

going to jump up to my own slide 82. And this slide is about
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the evidence that is in the case and specifically the
uncontested evidence that's in the case.
Now, it is true that Mark Pesce and Tom Kidrin
were deposed by Bungie. But Ron Britvich, Ken Locker, Dave
Marvit and Conor Laffan also testified through declarations
on what Worlds was doing on press releases that were issued,
on a Wall Street Journal article that was written on April 3rd
of -- or, excuse me, it was published on April 3rd of 1995.
And Ron Britvich, Ken Locker, Dave Marvit and
10
Conor Laffan were not deposed. Now, there is the question
11
what does it mean lost on grotto, the one version lost on
12
grotto? Conor Laffan was the records custodian for Worlds
13
and he wasn't deposed.
14
Dave Marvit and Ken Locker, well, Dave Marvit in
15
particular, from his declaration, he ran the team that was
16
working on the Worlds Chat program. We have evidence,
17
declaration evidence of these, of when the Worlds Chat
18
program was available for download and what was going on.
19
We have Ron Britvich who worked at Worlds and
20
who was a programmer at Worlds and who worked on -- it was
21
actually at the time a competing project, but a similar project
22
to the Worlds Chat program that was being written.
23
24
And so all of this evidence here is uncontested.

The evidence of diligence, Mr. Rosato mentioned the duration
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that was necessary for diligence, but the duration isn't as long
as he claims.
If you agree that there was a conception as of
April 11th, then you only need to get to April 25th for an
actual reduction to practice when the product Worlds Chat was
available for download. And it was available for download
with avatars being able to display field of views and what
they called a brute-force crowd control.
Now, it's true, Your Honor, some of you
10
mentioned, you mentioned that, yeah, obviously they make
11
changes. They make adjustments. They went from a
12
brute-force crowd control method to a cell-based crowd
13
control method and there were adjustments.
14
But at the beginning of all of that you have a
15
CHANGELOG and you have testimony from Ron Britvich
16
saying that when programmers make entries into a
17
CHANGELOG it means they have completed the code and they
18
have tested it and it works.
19
20
21
JUDGE BEGLEY: How is a CHANGELOG

credible evidence of what was actually in the code?
MR. HELGE: Well, Your Honor, it is obviously
22
not the code itself. Now, we did have a code from the client
23
side that dealt with displaying a field of view. Of course, if
24
Your Honors decide that Funkhouser performs the determining
25
step that are in these claims, well, that displaying of a field of
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
view was also in the Worlds Chat program. We have that
code.
3
4
5
6
Now, for the brute-force crowd control, it's true,

we have a later version of code that includes those updates.
JUDGE BEGLEY: So you are conceding that the
RSRoom code is a later code?
MR. HELGE: Yes, Your Honor, yes. Absolutely.
JUDGE BEGLEY: When are you conceding that
9
10
that was made?

MR. HELGE: Your Honor, I think Bungie makes a
11
fair point, which is in the CHANGELOGS they had modified
12
the name of the file to RS, instead of, for example, Room.cc,
13
they changed it to RSRoom.cc. There is not an indication of
14
when exactly that happened but it looks like it was in 1996.
15
JUDGE BEGLEY: Okay.
16
MR. HELGE: And that includes an update from
17
the brute-force crowd control to the cell-based crowd control.
18
But if you look at what the CHANGELOG says, it says they
19
performed a brute-force crowd control.
20
Based on what is shown in that CHANGELOG, it
21
looks like brute-force is we take the entire world and we
22
perform crowd control, rather than later on what they've done
23
is a cell-based crowd control where you are actually doing it
24
cell-by-cell, for example.
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JUDGE BEGLEY: If you are acknowledging that
the RSRoom code is from 1996, and all we have is the
CHANGELOG explanations of what happened from about '95
through '96, how can we make any -- how can we rely on the
RSRoom code at all?
MR. HELGE: Well, the RSRoom --
JUDGE BEGLEY: Just based on the
CHANGELOG? We can just read those descriptions and
assume that that is actually -- that the program, that the
10
inventors actually coded that as they say in the description?
11
MR. HELGE: Well, Your Honor --
12
JUDGE CHUNG: Excuse me. You have about
13
four minutes. Sorry.
14
MR. HELGE: I think you also have testimony
15
from Ron Britvich, for example, who was working in
16
conjunction with these programs and who observed these
17
things.
18
If Bungie had wanted to test Ron Britvich's
19
testimony, if they wanted to cross-examine him, they could
20
have and they could have evaluated whether his statements
21
were credible. I suspect what they are going to do is they are
22
going to stand up here and tell you that there was no need to
23
cross-examine him because he had been paid at one point in
24
Worlds stock for his time and for his consulting that he
25
performed for Worlds.
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But Dr. Zyda himself for Bungie was also paid.
And getting paid for work is not necessarily indicative of
unfair bias. And so if Bungie had wanted to truly test that,
what they should have done is deposed him.
Ron Britvich worked at Worlds at the time, a
crucial time, in April of 1995. He provides testimony on it.
Of course the CHANGELOG is -- yes, Your Honor? I'm sorry.
JUDGE BEGLEY: Where is the evidence that the
servers in the Worlds Chat sent selected positional updates to
10
the clients as of April 1995?
11
MR. HELGE: Your Honor, I think it has to be
12
wrapped up into that idea of brute-force crowd control. The
13
way the patent talks about crowd control on the server side is
14
about the server and sending information to the clients.
15
JUDGE BEGLEY: So you are saying that we need
16
to take the description in the CHANGELOG of crowd control
17
and combine it with the specification of the patent to say that
18
there was conception and reduction to practice in April of
19
1995?
20
MR. HELGE: Well, for reduction to practice,
21
Your Honor, again, I think we can look to the testimony from
22
Ron Britvich and Dave Marvit to say what was released. But
23
in terms of the general crowd control --
24
25
JUDGE BEGLEY: But where do they talk about

that the server sent positional updates to all the clients?
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1
2
MR. HELGE: We ma y not have specific testimony

on that, Your Honor.
I think we have consistent terminology in the
specification, we have consistent terminology in the
CHANGELOG, the fact that those are consistent, and that the
crowd control term continued to be used.
So, for example, when you have, later on in the
CHANGELOG, when they talk about updating from
brute-force to cell-based, it doesn't indicate that there is a
10
different mechanism of this being performed, in other words,
11
we are still measuring distances and then sending updates
12
based on those distances. It's just the basis for that has
13
changed. And so I think the RSRoom at least is indicative of
14
the nature that that update gave you.
15
JUDGE BEGLEY: Well, what if the inventors
16
changed what they meant by crowd control? What if that
17
developed over time?
18
MR. HELGE: Your Honor, I think if they had
19
done that over time we would have seen some indication of it
20
in the specification.
21
The specification is very clear. I think there is
22
one point in the '690 patent, column 13 or so, where they say
23
crowd control was one of the most important things we had to
24
overcome.
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JUDGE BEGLEY: How would it show -- how
would a description of crowd control in detail in the
specification, how would that reflect what the inventors
thought crowd control meant from a CHANGELOG that is
written by some unknown author that just refers to crowd
control?
MR. HELGE: Well, Your Honor, again, I think it
is consistency within the organization, consistency within the
team, within the organization. Had they come up with a
10
different term, had they come up with a different way of
11
interpreting it, there would have been indications of that
12
either in the CHANGELOG or on the specification.
13
What we have right here is very consistent use
14
throughout in both of these documents. They corroborate each
15
other effectively. And, again, we come back to the last
16
question that we have four people who testified on this
17
process who were never deposed.
18
19
20
JUDGE BEGLEY: Which documents are you

saying use the term consistently?
MR. HELGE: Oh, the specification, Your Honor,
21
and the CHANGELOG, the specifications of all of the patents.
22
Again, I believe it is in column 13 of the '690 where they
23
discuss that crowd control, figuring out crowd control was one
24
of the crucial aspects of the invention.
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1
2
JUDGE BEGLEY: And for the -- not the RSRoom

code, the other code --
JUDGE BEGLEY: -- which has a longer name but
it is the field of view code.
JUDGE BEGLEY: How do we know what date that
8
9
was implemented?
MR. HELGE: Your Honor, that one has a
10
copyright date. Ron Britvich provided some testimony to say
11
that that one was determined to be prepared, I want to say it
12
was probably 1994.
13
14
15
JUDGE BEGLEY: Isn't that testimony just based

off of the copyright date, though?
MR. HELGE: It is, Your Honor, it is the copyright
16
date and also Ron Britvich, again, who had experience with
17
these programs and was working with these programmers,
18
albeit on a competing program.
19
But I think, you know, displaying a field of view
20
is something that people were doing, and so Worlds had
21
been -- they had been doing development back in 1994. The
22
Worlds Chat program that came about in 1995 was a later
23
program for them. But it certainly wouldn't be surprising if
24
they had cribbed off that old field of view calculation code to
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then incorporate into Worlds Chat, and I believe that is the
way Ron Britvich describes it.
JUDGE EASTHOM: Does there have to be
corroborating evidence for that date, for that 1994 copyright
date?
MR. HELGE: Well, Your Honor, I think the 1994
copyright date is corroborating evidence of Ron Britvich
saying that it was included within the Worlds Chat code.
So we have testimonial evidence to say that this
10
code was in place in 1995 in the Worlds Chat program and
11
then we have a copyright date of that code that then confirms
12
it was written pre-1995. I would say that's the corroborating
13
evidence of the testimony.
14
15
16
17
Your Honor, I see my ti me is up. If there are any

other questions, I'm happy to answer them.
JUDGE CHUNG: None from me. I don't know
about my colleagues.
18
JUDGE BEGLEY: None from me.
19
JUDGE CHUNG: Okay. Well, at this juncture we
20
are going to have a 10-minute break and then we will
21
reconvene with Petitioner's rebuttal, which is one hour. My
22
clock says 3:10 and like 40 seconds right now, so right around
23
3:20 we will meet back here.
24
(A recess was taken from 3:10 p.m. to 3:21 p.m.)
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1
2
JUDGE CHUNG: Please be seated. At this time

Petitioner has one hour to present their rebuttal.
MR. ROSATO: Thank you, Your Honor. I'm
going to start by addressing the topic we left off on, and that
is the attempt to antedate the Funkhouser reference. I want to
make clear, or at least one of the things I wanted to do is
make clear our argument regarding the RSRoom.cc code, and I
think that that has -- that issue has actually been rendered
more clear during this discussion with the Patent Owner's
10
agreement that that code is not pre-critical date code. It is
11
post-critical date code.
12
There was a question raised by the Patent Owner
13
as to why Petitioner chose not to depose a couple of the
14
witnesses that were presented. That was raised as somewhat a
15
point of criticism or, to the extent it was being raised to
16
suggest that Petitioner did not do something that they should
17
have done, we would obviously disagree with that.
18
We can look through the testimony of the
19
witnesses and look at the evidence that they are relying on
20
and make an assessment of that. In this case, it was the
21
RSRoom.cc code, the CHANGELOG, and at face value those
22
documents indicated that no pre-critical date code was
23
submitted, no evidence of the pre-critical date code was
24
submitted.
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And we got confirmation from the witness we did
depose, including Mr. Pesce, who confirmed to us, as we
discussed earlier in today's discussion, that whatever code was
available or existed prior to the critical date was modified and
replaced with something entirely different. So we know that
and that was confirmed again here today.
So to the extent any negative inference was
suggested by deciding that there was no reason to expend cost
and time on deposing experts whose testimony is insufficient
10
to establish what they are being submitted for, I think it is in
11
the best interest of everybody's time if parties aren't wasting
12
their time on needless discovery.
13
I also want to turn -- approach some issues in
14
reverse order compared to the order they were just discussed.
15
I want to return to this avatar construction issue. I wasn't
16
clear what Patent Owner's position was in regard to the need
17
for extrinsic evidence. Patent Owner submitted extrinsic
18
evidence regarding claim construction in the form of
19
Mr. Pesce's testimony regarding the state of the art at the
20
time.
21
So there seemed to be an indication that Patent
22
Owner believed extrinsic evidence was necessary. I heard an
23
indication today that they believe there was no need for
24
extrinsic evidence and that was in the context of the Microsoft
25
'97 dictionary definition.
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So that is direct rebuttal to the testimony from
Mr. Pesce and his theory that the state of the art was rapidly
changing, doing a 180 degree modification in a short span
between 1992 and 1995, but we can't have a situation where,
in the context of this claim construction, some extrinsic
evidence is utilized and other is not.
JUDGE EASTHOM: So is this, one way to break
it down, is this -- are you saying that the plain and ordinary
meaning includes three-dimensional and two-dimensional, but
10
to limit it to three-dimensional you have to be a lexicographer
11
if you are the patentee?
12
MR. ROSATO: In the way that they are
13
suggesting that three-dimensional be applied, I mean, they
14
seem to be suggesting that when it comes to -- they are
15
essentially applying different standards depending on what
16
they are looking at, I guess, is the way to get at the issue
17
here.
18
When they are looking at their own specification --
19
I'm sorry, their own patents, they seem to apply some
20
definition, some unstated definition of three-dimension that
21
nothing meets, that Durward doesn't meet, that, you know,
22
these disclosures that are really the same as the way their
23
rendering has described don't meet that.
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So they won't say what three-dimensional is other
than to say it is something different, apparently, I mean, I still
don't know what their definition is.
JUDGE EASTHOM: That's another interesting
question. You have the burden to come forward and show
unpatentability. And I guess you are suggesting that Patent
Owner has some burden to define what their invention is after
you come forward? I'm still not clear.
MR. ROSATO: Yeah, that's a fair question. We
10
offered a construction. We think that that is correct. And we
11
think that that is substantiated. So I think that satisfies the
12
burden.
13
There was a question, I forget who asked it, but
14
Patent Owner was asked, well, how exactly are you viewing
15
three-dimensional, how would you define that? And the
16
answer was as defined in the patent specification. Okay?
17
So that's not an unfair response but there are a few
18
things about the patent specification that are worth looking at,
19
and this ends up being fairly consistent with the argument that
20
the Petitioner has advanced.
21
I'm going to put this demonstrative up on the
22
ELMO, and I apologize for the line. My pen slipped there. I
23
hope that doesn't bother you. So ignore the accidental pen
24
mark on the demonstrative. But this is disclosure in the
25
specification of one of the patents --
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1
2
JUDGE BEGLEY: What are you showing? I can't

see it.
MR. ROSATO: My apologies, Your Honor. I put
up on the ELMO slide 22 from Patent Owner's demonstrative
exhibits.
MR. ROSATO: I will give you a mo ment to turn
there if you need it.
JUDGE BEGLEY: I'm there. Thank you.
10
MR. ROSATO: So if the answer to the question of
11
how you define 3-D is as defined in the specification, what we
12
know from the specification is that the image of an avatar can
13
be this i-th panel, that is one panel showing a view of the
14
avatar. So you have one two-dimensional panel can give you
15
a view of the avatar.
16
And that is the avatar that is displayed. It is right
17
there in the patent in black and white. So if the answer to the
18
question how do you define 3-D is as defined in the patent,
19
then a three-dime nsional avatar can be a single
20
two-dimensional panel from a collection of two-dimensional
21
panels.
22
23
24
25
Unless there are any questions, I want to turn to

the next thing. Everybody looks like they are pondering -JUDGE BEGLEY: I'm still having trouble
understanding your position. So you came in with your claim
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construction just saying it needs to be a graphical
representation of a user, and now Patent Owner is saying it
needs to be a three-dimensional graphical representation of a
user.
But you don't -- but you are not willing to take a
position on whether it needs to be exclusively -- you are not
willing to take a position about whether it can be
two-dimensional?
MR. ROSATO: Well, I would agree with you up to
10
a point there, Your Honor. We did come in with a
11
construction that was sensible and indicated that it need be a
12
graphical representation of the user. I also agree that the
13
Patent Owner came back and said that's incorrect, it must be a
14
three-dimensional representation of the user. Okay.
15
We don't believe that that qualification is
16
necessary. But to the extent it is going to be considered, what
17
does that mean? That is the point I'm addressing right now.
18
And what that seems to mean, according to the Patent Owner,
19
is that means what it says in the specification.
20
So if we are going to look at what it says in the
21
specification, what it says is three-dimensional can be -- can
22
include a single panel of a two-dimensional -- a single
23
two-dimensional panel, essentially. An avatar,
24
three-dimensional avatar can include a collection of
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two-dimensional panels and a view of that avatar can be a
single two-dimensional panel.
So this is in response to Patent Owner's
qualification that this limitation of three-dimensional must be
read into the claim. We're not advancing that position. We
think it is wrong. But to the extent it must be read in, the
question is what must be read in? And if the answer to that,
according to Patent Owner, is whatever is in the specification,
then we can look at what is in the specification.
10
11
JUDGE BEGLEY: Well, what is your position as

to what three-dimensional means?
12
MR. ROSATO: Well, it can include a single
13
two-dimensional panel when viewed, but the avatar itself
14
would have to include at least, you know, a plurality of those
15
two-dimensional panels in some capacity in the context of the
16
patent.
17
JUDGE BEGLEY: So you are saying this means
18
three-dimensional, this column 7, this is defining
19
three-dimensional?
20
MR. ROSATO: I think that -- yeah, I think it is
21
clear that this is what the patent is -- they are referring to this
22
as a three-dimensional avatar. This is also what Mr. Pesce
23
had characterized as a quasi-three-dimensional avatar, similar
24
to what was utilized in the Wolfenstein 3-D product that was
25
released at the end of 1992.
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JUDGE BEGLEY: I guess, counsel, what would
you propose our construction be, that we just ignore -- you
have proposed a very broad construction without
acknowledging that there could be a distinction between
three-dimensional, quasi-three-dimensional, two-dimensional.
Patent Owner comes back and says it has to be
three-dimensional.
8
9
10
11
I'm not sure where we're left with because you are
not -- you are just saying if it needs to be three-dimensional,
three-dimensional means this.
MR. ROSATO: What I'm saying is our proffered
12
construction was avatar means a graphical representation of a
13
user. Patent Owner has asserted that that cannot be. It must
14
include some measure of three-dimensional, or
15
three-dimensionality. They haven't stated what measure that
16
is until today.
17
Today, they stated that measure of
18
three-dimensionality is what is described in the specification.
19
So this is responsive to Patent Owner's argument. To the --
20
JUDGE BEGLEY: I guess --
21
MR. ROSATO: Go ahead, Your Honor.
22
JUDGE BEGLEY: Sorry, you can continue. I
23
24
25
thought you had stopped.

MR. ROSATO: So, I mean, if we are thinking of
how this issue constructs, you know, as I indicated in leading
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into this discussion at the first instance, I believe this is
ultimately all a moot point. It doesn't matter whether avatar
is deemed three-dimensional or two-dimensional or simply a
graphical representation of a user.
JUDGE EASTHOM: That was my question. So
with respect to Durward could you explain why that is 3-D?
Is it because -- is there a disclosure in there that there are
different views of the same 2-D image or something that is
similar to this? How do we get there with Durward?
10
MR. ROSATO: Good question. So there is
11
description of the three-dimensional world and its components
12
that are swept into the three-dimensionality. There is some
13
disclosure regarding movement of beings within that, in that
14
world, including things like flexures, which the term implies
15
some sense of curvature, right, moving curvature, so you can't
16
have necessarily flexures -- it is hard to imagine how you
17
would have a flexure, a moving curvature in two-dimensional.
18
And there is discussion of the desire to mimic the
19
movement or match the movement of the three-dime nsional --
20
I'm sorry, of the virtual beings to the movement of the person
21
in reality. So people in reality move in three dimensions. So
22
if you are trying to mi mic or match the movement of a real
23
person that indicates that you are doing it in three dimensions.
24
25
There is also disclosure of monitoring the

orientation of virtual beings, updating the orientation of
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virtual beings that are viewed. And if something doesn't move
other than to change orientation, only in three dimensions
does that mean anything.
JUDGE EASTHOM: So it does disclose giving
you a different view of an avatar's orientation? In other
words, the same thing I questioned about the penguins, in
other words, is there a disclosure of a rotating penguin, you
see the penguin's back? Not a penguin but whatever it is in
Durward.
10
11
MR. ROSATO: Yeah, so I believe that there is

disclosure of updating the orientation of virtual beings, right.
12
JUDGE CHUNG: So it looks like you have like
13
the front view, back view, side view, top view. Where is that
14
disclosure?
15
MR. ROSATO: It says orientation. I don't think it
16
goes as far as to say we are going to give you back or front or
17
N number of i-th panels.
18
19
20
JUDGE CHUNG: So if it doesn't go as far as that,

how does that teach three-dimensional?
MR. ROSATO: Because if there is change in
21
orientation but not position, that only matters for a
22
three-dimensional being. So what I'm saying is there are a
23
number of points of disclosure that are entirely consistent
24
with three-dimensionality.
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JUDGE CHUNG: Well, why can't you have a
bird's-eye view of, let's say, a two-dimensional avatar and
then have that two-dimensional avatar change positions or
change orientation, where it would be facing one way and then
face another way? Wouldn't that still be a two-dimensional
avatar changing the orientation but --
MR. ROSATO: You mean like rotated?
JUDGE CHUNG: Yes. In that scenario I don't see
how that is a three-dimensional avatar, understanding that
10
not all of the claims recite three-dimensional avatar but
11
there are some that do, such as in the '501 patent and I think
12
the '998 patent.
13
MR. ROSATO: Right. My recollection, and I
14
would look at column 5, I think, is discussion of the
15
orientation.
16
JUDGE CHUNG: What lines?
17
MR. ROSATO: I think it is around line 30, as I
18
was taking notes here as the prior discussion was occurring. I
19
know there is some discussion of monitoring orientation.
20
There is also, you know, obviously discussion of distance.
21
JUDGE CHUNG: Again, how is that
22
three-dimensional if it is just changing -- if you are rotating
23
a bird's-eye view of an avatar, a two-dimensional avatar, how
24
is that three-dimensional if it is not different views, such as
25
what my colleague Judge Easthom would say, a front view,
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
side view, back view, similar to what was being discussed
with respect to the penguin?
MR. ROSATO: Sure. I think the point here is that
there are a couple points of disclosure including the ones that
were discussed that are consistent with three-dimensionality,
right, like the flexures and the movement of joints and
matching the movement of a real person in real space.
8
9
10
11
JUDGE EASTHOM: So you are really saying any

movie that you watch on television, or even the screen, for
example, Judge Begley, if we can see her moving that's 3-D?
MR. ROSATO: Well, I do perceive some depth,
12
change in depth from the wall behind her to where she is, so
13
there is that level of three-dimensionality.
14
JUDGE EASTHOM: That's the question, I think.
15
So you are saying that Durward discloses that sort of a
16
movement so that's 3-D?
17
18
19
20
21
22
23
24
MR. ROSATO: Well, absolutely. I mean, you can

see that in the figure. There is proximity differences.
JUDGE CHUNG: How does a stick figure show
three dimensions?
MR. ROSATO: A stick figure doesn't, but figures
in patents are, you know, as we know, are not -JUDGE CHUNG: Well, doesn't Durward illustrate
stick figures?
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1
2
MR. ROSATO: As does the Worlds patent has a

stick figure in it, too.
3
4
JUDGE CHUNG: It is my understanding that they

have the penguin, too, as well, right?
MR. ROSATO: I'm sorry, I didn't hear that.
JUDGE CHUNG: They have the penguin, that
three-dimensional walking penguin?
8
9
MR. ROSATO: Arguably, but this gets to the

issue of one of three-dimensional. If you have a
10
two-dimensional, as we see on the slide here, that tells us that
11
that penguin we are looking at is actually a single
12
two-dimensional panel.
13
So this gets to the issue -- this is not, you know, to
14
try to avoid defining three dimensions. It is just that it's not
15
always an entirely easy thing to define.
16
JUDGE CHUNG: What if you have a stick figure
17
showing flexure, kicking, running and so on, touching,
18
painting, writing, why can't you have that, a stick figure doing
19
that?
20
21
22
23
24
25
MR. ROSATO: I don't think you could have it

illustrating flexures or monitoring or mapping.
JUDGE CHUNG: So you can't have a stick figure
moving their stick arm like this?
MR. ROSATO: I think you could have a stick
figure moving its arm like that. I don't think that that stick
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figure moving its arm would be illustrating a flexure of
movement or mirroring the movement of a real person in real
space, and as I don't think that the disclosure of Durward was
intended to have the stick figure be taken literally.
I think that was a -- I mean, I've drafted patents
and hand drawn figures myself and I can assure you that those
were not meant to be taken literally.
JUDGE BEGLEY: But isn't it more that the
disclosures of Durward are, at least Patent Owner is arguing,
10
don't support those three-dimensional, and then you also have
11
the stick figures, so it is the combination of the two that is the
12
problem?
13
MR. ROSATO: I'm sure they are arguing that but
14
that would ignore a whole bunch of other disclosure,
15
including the starting fact that it is a three-dimensional world.
16
So you couldn't have a stick figure drawn on paper
17
or even the way they represent their virtual world, which we
18
know they define as three-dimensional in other figures, we're
19
not seeing like a diorama on the page, so we know that they
20
are talking about their three-dimensional virtual world and
21
using simplified schematics to illustrate that.
22
JUDGE BEGLEY: I thought that you had agreed
23
earlier that there can be two-dimensional figures in a
24
three-dimensional world?
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1
2
MR. ROSATO: Did I agree with that? I'm not

sure what you are referring to.
JUDGE CHUNG: I thought that that was in
response to a question by Judge Easthom. Maybe my me mor y
is incorrect.
JUDGE BEGLEY: Well, regardless, if you didn't
agree to it before, can you explain whether you agree with it
now? And then, also, if you don't agree with it, don't the
Worlds patents explain that it is a three-dimensional world so,
10
if you are saying that Durward has to have three-dimensional
11
avatars because it is a three-dimensional world, how does that
12
impact your claim construction?
13
MR. ROSATO: We did address this earlier, and I
14
think as we discussed, it is a different analysis when you are
15
doing claim construction, a claim construction exercise and in
16
contrast, looking at a column and a passage and interpreting
17
that content.
18
In a column with a passage it is fair to look at a
19
single paragraph that is talking about a three-dimensional
20
world and not require the author to enumerate every single
21
object of its three-dimensional world with the prefix of 3-D. I
22
think that is a reasonable expectation when reading a piece of
23
disclosure.
24
25
On the other hand, when you are looking at

different claims where you have -- I mean, there is a whole
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
different body of law, for example, but we know that looking
at claims from different patents, when an author chooses to
write those claims differently that raises the question of, you
know, should the terminology, different terminology be
rendered meaningless or are we supposed to give it some
aspect of meaning?
And we know that we are not supposed to render
terms meaningless. We are supposed to give claim
terminology meaning.
10
So I understand the logic of that question and that
11
point and, you know, I think both sides have tried to, I would
12
say, apply some level of consistency here, which isn't always
13
easy, but there are different standards that apply to
14
interpreting claims versus a different standard of what a
15
person of ordinary skill in the art would understand reading a
16
passage.
17
That's the best I can explain that.
18
JUDGE BEGLEY: I would like to go back to my
19
question before. I'm still not sure what you -- where we're
20
left with, with the avatar construction.
21
If you come in with a very broad construction and
22
Patent Owner comes in and says it has to be 3-D, and I'm not
23
sure that -- I can't understand if you are actually disputing
24
whether it needs to be 3-D. I don't see how we can just adopt
25
your broad construction without acknowledging Patent
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Owner's argument. I'm not sure where you are proposing that
we go.
Can you explain that? I mean, we need to put
forward a construction, and I think that yours was broad, and
now we have a specific issue, but you don't seem to be
disputing clearly that an avatar is three-dimensional. So can
you just clarify exactly what you would like the construction
to be?
MR. ROSATO: Yes. So I would agree that the
10
construction we proposed is broader than the one Patent
11
Owner has proffered, though I don't know if I agree that it is
12
an unreasonably broad construction, if that was the
13
implication.
14
15
JUDGE BEGLEY: That was not the implication.

I'm just saying it is broader than Patent Owner's.
16
MR. ROSATO: Okay, I agree with that.
17
JUDGE BEGLEY: We need to understand what
18
your -- now that there is responsive evidence, I'm at a loss as
19
to what you would like us to do.
20
MR. ROSATO: Okay. What I think is the
21
appropriate thing to do is that for the term avatar that we are
22
not importing limitations that could have been written into the
23
claims but were not. So avatar is simply a graphical
24
representation. And to the extent additional limitations are
25
desired, the Patent Owner could have but did not put those in
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
the claims, and they shouldn't be imported from the
specification.
So the term avatar should be construed as a
graphical representation of the user. With regard to the prior
art it clearly meets -- there is no question that Funkhouser
meets that. With regard to Durward there is no question that
it would meet the Patent Owner's -- I'm sorry, the Petitioner's
proffered construction, but it also would meet the Patent
Owner's suggested construction.
10
So at the end of the day it raises the question of
11
whether an express construction is critical to the outcome or
12
necessary for the outcome in the event, quite frankly, that
13
Durward is properly interpreted.
14
With regard to --
15
JUDGE BEGLEY: And -- sorry, continue.
16
MR. ROSATO: With regard to the different term,
17
three-dimensional avatar, then that should be construed as
18
three-dimensional, and I agree that there is some challenge to
19
the Board in how to construe this.
20
I think the easy part is the art meets that
21
definition. The more challenging part is when you get into
22
the examples in Patent Owner's specification as to how they
23
perceive a three-dimensional avatar as including a view from
24
a two-dimensional panel.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
It makes, you know, this establishing a bright line
less easy. And that's an unfortunate reality of the art at the
time. And we know that by looking at things like the
Wolfenstein 3-D game that Mr. Pesce discussed.
I think that the construction unnecessarily
complicates -- unnecessarily overcomplicates the issue
because, again, at the end of the day, the prior art meets the
definition. Right? So we are struggling with this definition
of whether to read things in or make natural assumptions
10
based on, you know, if something is a 3-D world do you
11
assume that the content of that world is also
12
three-dimensional?
13
That has to work both, you know, we have to apply
14
some level of consistency. So I agree to the extent that there
15
is some -- there seems to be some desire for consistency.
16
If that's the case, then the natural and sensible
17
outcome is to make the logical reading of Durward and, you
18
know, and it is the same standard that Patent Owner is
19
suggesting be applied to the claims that you look at their
20
three-dimensional world and say, okay, the specification talks
21
about the three-dimensional world. Everything in it has to be
22
three-dimensional.
23
So if there is some strict level of consistency in
24
application, the only sensible outcome is to find that the prior
25
art falls within the scope and, quite frankly, renders --
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JUDGE BEGLEY: Well, what if we can't tell if
Durward meets this two-sentence explanation of
three-dimensional in the Worlds patents?
4
5
MR. ROSATO: If it meets, I'm sorry, if it

meets the --
JUDGE BEGLEY: You are saying that we should
adopt the three-dimensional -- or Patent Owner is saying we
should adopt its explanation of three-dimensional in the
patents. And you are not clearly disputing that.
10
So let's say we read this and we look at Durward
11
and we don't know whether Durward meets the patent's idea of
12
three-dimensional.
13
MR. ROSATO: When you say things, Your Honor,
14
like I'm agreeing or not disputing, I want to make sure we're
15
clear on those. So what I'm -- I'm not clear what I'm not
16
disputing, to be honest, but let me rephrase this.
17
I don't -- if the suggestion was do I think Durward
18
has to have the exact same embodiment that is disclosed in the
19
Worlds patents and that we're looking at in column 7, the
20
answer is no, I'm not saying that that is -- that somehow
21
creates a special definition of three-dimensional.
22
So if that was the suggestion, let's clarify that. I
23
think everybody, both sides agree that this is an example of
24
three-dimensional. Right? So, I'm sorry, the second question
25
is what?
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JUDGE BEGLEY: I guess let's just start from
scratch. Do you dispute that the Worlds patents require -- in
the patents at issue, the avatars need to be three-dimensional?
MR. ROSATO: Like I said, some of the terms say
avatar. Some say three-dimensional avatar. I think under a
claim construction application it would be improper to render
terminology of a claim meaningless.
8
9
I also don't see how an outcome could be reached

where some aspects are read in, read from the Worlds
10
specification into a term and then a review of the Durward
11
reference --
12
13
JUDGE CHUNG: Excuse me, counsel, on this, if I

ma y interrupt.
14
MR. ROSATO: Yes.
15
JUDGE CHUNG: The term avatar in isolation,
16
without the words three-dimensional preceding it, so let's
17
forget about the '501 patent and the '998 patent for a mo ment,
18
and there are other patents that are at issue that me rely recite
19
avatar in isolation, whether or not that is
20
three-dimensional.
21
You are disputing Patent Owner's definition of
22
avatar being necessarily imported to three-dimensional,
23
correct? Your definition is avatar is a graphical user
24
representation, or whatever that was, I think it was a graphical
25
representation of a user, if I reme mber correctly.
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So you are saying that it doesn't necessarily import
three-dimensional into that definition. Is that correct, my
understanding?
MR. ROSATO: That's correct.
JUDGE CHUNG: Okay. So if you had a stick
figure or two-dimensional avatar, then that would read -- or
that would teach avatar in isolation of whether or not that
avatar is three-dimensional, right? If the claim merely said
avatar, if you had a two-dimensional avatar, that would
10
teach avatar?
11
12
MR. ROSATO: If that is meant to be a

representation of a user, yes.
13
JUDGE CHUNG: Okay. Okay. Thanks.
14
JUDGE BEGLEY: So your position is that a
15
two-dimensional figure is an avatar at least for the claims that
16
don't say three-dimensional avatar?
17
MR. ROSATO: No, my position is the claim says
18
avatar. That is a graphical representation of the user. If we
19
are looking to prior art and we see a graphical representation
20
of the user, the analysis need not go any further. The claim
21
limitation is met.
22
JUDGE CHUNG: So whether or not that is a
23
three-dimensional avatar or two-dimensional avatar or
24
an y dimension of an avatar, that would, indeed, teach an
25
avatar?
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MR. ROSATO: Yes.
JUDGE CHUNG: Okay.
MR. ROSATO: Like it is asking -- it's asking if
the prior art --
JUDGE CHUNG: But it is not limited to
three-dimensional, which is what Patent Owner's position is,
and your position is we are not limiting ourselves to any
definition of avatar; rather, our definition is just a graphical
representation of a user regardless of dimension?
10
MR. ROSATO: Right. And think about the
11
exercise that was taking place. There is a claim terminology
12
and there is an effort to show that, you know, the prior art
13
produces that feature. The claim term is an avatar. We
14
pointed to prior art in the papers, a graphical representation of
15
the user.
16
Then the rebuttal argument was we want to read in
17
a limitation from our specification. Rebuttal argument to that
18
would be we think reading in limitations is improper. Even to
19
the extent that limitation is read in, the prior art still meets it.
20
So while we are on the topic of straightforward
21
claim construction issues, let's talk about the determining
22
step. And I'm being facetious a little bit. I'm still using the
23
ELMO, but I have to say I was a little confused as to Patent
24
Owner's position with regard to the determining step.
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My understanding from the briefing was that they
were arguing a field of view determination was outside the
scope of determining. The initial reference to claims 1 and 4
of the '690 patent seemed to be indicating that there was a
field of view determination in step 1(b) of claim 1 and then
that the modification of objects was after that.
So I don't know if I was mishearing that but that
seemed to confuse the issue. But on this issue of, you know,
the graphics pipeline or the argument that the field of view
10
determination has to be separate from the display end, and,
11
therefore, the determining, I wanted to make a couple points
12
on some subject matter that was presented.
13
14
15
16
I want to first put up on the ELMO -- let me start

with slide 64 of Patent Owner, Patent Owner's demonstratives.
JUDGE BEGLEY: Sorry, counselor, what slide
was that? I couldn't hear you.
17
MR. ROSATO: Slide 64, Your Honor.
18
JUDGE BEGLEY: Of your slides?
19
MR. ROSATO: Of Patent Owner's demonstrative
20
exhibits. So there was an argument advanced that Petitioner's
21
expert had provided some description of how those of ordinary
22
skill in the art would interpret a graphics display.
23
The underlined text was pointed to but I just
24
wanted to make sure that the previous sentence in that
25
discussion was not overlooked. And there Dr. Zyda indicated
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that a graphics display just might be a screen to display
something. And that's a fairly commonsense understanding
and it is a plain reading of the disclosure that is at issue.
After that discussion, lines, I think it is lines 18 of
the same exhibit, Dr. Zyda talks about -- he further clarifies
some aspects of how those of ordinary skill in the art viewed
some of this terminology. So to the extent this was being
considered, I would just draw attention to surrounding
disclosure.
10
JUDGE EASTHOM: I have a question about
11
Patent Owner's position. I think it was representative of
12
claim 1 of the '690 patent. And I'm on your slide 9. I think
13
you have that claim.
14
He is saying that the determining step there based
15
on the receiving from the server in step A implies that the
16
client received those positions, I think that's what his position
17
was, and so that the server can't perform that determining
18
step. Could you address that? Maybe I'm getting tired.
19
MR. ROSATO: Yes, understandable. And to be
20
honest, I thought the discussion was confusing, but looking at
21
the claim, there is a wherein clause that states wherein steps
22
A and B are performed by the client process associated with
23
the first user.
24
25
You know, we addressed this as if a client process

were being performed by the client. I didn't fully
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
understand -- I thought that discussion got a little confusing.
And, like I indicated when I started, I thought the discussion
regarding the determining step, actually I felt a little bit more
confused as to the interpretation than less.
But if we are to stay focused, I know this is easier
for me to say than you, but we really were making sure that
our prior art applications were addressing even the most
conservatively --
JUDGE EASTHOM: Right, I reme mber you
10
saying you were going to conserve. Was this the claim, in the
11
'690 patent, the one where we went in the institution and said
12
that it could be the server, or was there a broader claim? I
13
might be mistaken.
14
15
MR. ROSATO: Yeah, it is a different claim, Your

Honor.
16
JUDGE EASTHOM: Oh, thank you. Okay.
17
MR. ROSATO: That's the '856 patent. That was
18
where there is an issue of whether the determining step is
19
performed by the client or whether the claim leaves it broad
20
enough to be performed by either the server or the client.
21
JUDGE EASTHOM: So your position is, is that
22
whether or not the client does this or not, the art still satisfies
23
it, but what is your position on whether or not the server can
24
perform step B? That's the position the institution doesn't
25
talk about.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
MR. ROSATO: Yeah, the Institution Decision
noted that it could be broader. It also noted that even if we
were to assume that the client, the art works, as Bungie has
set forth, so our position is the art as we applied it works
should the interpretation be that step 1(b) is performed by the
client. I don't think it changes if the construction ends up
being broader than that. The outcome doesn't change.
8
9
10
11
And as far as I can tell -- well, I guess I would

say, you know, their point of distinction on determining
becomes even more tenuous with a broader claim.
So I've put on the ELMO, this is slide 11 from
12
Patent Owner's demonstrative exhibits. We made a point in
13
our reply briefing, and I just wanted to emphasize it here
14
again, because this could potentially get lost, but Patent
15
Owner seems to continuously conflate the rendering with the
16
display and treat the two things as if they are the same thing.
17
And that's an unreasonable assumption or premise,
18
but that is a premise to their -- it seems to be the fundamental
19
premise to their entire determining claim construction
20
argument. In other words, there is no difference between
21
rendering an image and displaying it.
22
I don't think that that position is supported in their
23
specification, including the very figure and disclosure they
24
have submitted or displayed here. And this figure very
184
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
clearly shows the rendering engine as a separate component
compared to the display.
So this all lines up with the very sensible
explanation provided by Dr. Zyda and Bungie that it would
make sense that you could determine a set of users that are to
be displayed and then display them. That is entirely
consistent with the disclosure we're looking at here and that is
found throughout the Worlds specification.
It was consistent with the testimony from Dr. Zyda
10
that I put up a moment ago on slide 64 of Patent Owner's
11
demonstratives where he said that a graphics display just
12
might be a screen to display something. And that is exactly
13
what seems to be illustrated in the figure here.
14
15
16
17
18
19
20
So I realize I only have a few minutes. I just want

to bring attention -JUDGE CHUNG: 11 minutes and 30 seconds,
approximately.
JUDGE BEGLEY: What figure were you just
referring to?
MR. ROSATO: So this was, it looks like figure 4
21
of the '690 patent. So that would be figure 4 of any of the
22
patents that are at issue. And this was the representation in
23
demonstrative exhibit slide number 11 of the Patent Owner.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE EASTHOM: So your big point is that the
rendering engine can make a determination. Is that the high
level?
MR. ROSATO: Yes, and there is disclosure we
reference in our reply briefing that points out that the
specification describes executing and rendering programs and
then outputting the results to a display. So this is entirely
consistent with this idea that a determination can occur and
then the results of that determination are output to a display
10
11
and there is a physical act of displaying something.

Not this, you know, this graphics pipeline concept,
12
that's not described anywhere in the specification, that would
13
conflate all of these processes into one single component.
14
That's just not how it is represented in the specification.
15
A couple things that I want to make sure we cover,
16
and I'm going to just prioritize. Okay. There was discussion
17
of the perspective switching and teleporting, and a few points
18
of clarification there.
19
Patent Owner had seemed to try to modify their
20
argument to make it one of attacking the rationale, the
21
enjoyment rationale, and there is an indication that enjoyment,
22
because the prior art was really dealing primarily with
23
military applications and use in the academic environment,
24
that the enjoyment aspect isn't relevant.
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I'm not sure that agrees -- I'm not sure me mbers of
the military or academia would be happy to hear that they are
being denied enjoyment of any video games, but that argument
didn't really make sense to distinguish, you know, enjoyment
based on the target audience.
Additionally, the Marathon reference itself
discloses -- this all came down to an issue of higher speed. I
think the argument was, you know, people in the military or
academia might have access to higher speed connections than
10
the Worlds patents but everybody else on the planet was stuck
11
with a modem.
12
That's not an accurate representation of the prior
13
art disclosure. The Marathon reference discloses higher speed
14
connections. It references an Ethernet connection on page 5
15
of the Marathon reference.
16
Mr. Pesce had been asked about this during
17
cross-examination and agreed that an Ethernet connection
18
would be much faster than the network speed that is disclosed
19
in Worlds patents and on which the lag assumption was based.
20
I would direct the Board's attention to Exhibit 1046, pages
21
269 and 270 on that issue.
22
In cross-examination Mr. Pesce also acknowledges
23
that the Durward reference identifies use of higher speed
24
connections, higher speed than the assumption that was being
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
made. And I would direct the Board's attention there to
Exhibit 1046, pages 266 through 268.
Okay. So I'm going to put up on the ELMO page 7
from the Funkhouser '95 reference. Patent Owner had
challenged the rationale for combining Funkhouser '95 and
Funkhouser '93. But I did want to just make sure -- this is
identified in the petition as well as the reply briefing, I
believe -- but just bringing to the Board's attention that
Funkhouser '95 specifically discusses Funkhouser '93 and
10
making use of the Funkhouser '93 optimization algorithm.
11
So with regard to rationale to combine, remember
12
that at some point the standard being applied for rationale to
13
combine was this so-called teaching, suggestion, motivation
14
test, right, and sitting in the Supreme Court in KSR -- sorry,
15
yes, KSR, I'm getting my Supreme Court cases mixed up, but
16
KSR told us all that while the express teaching requirement is
17
a very helpful thing for obviousness, it is too high and too
18
strict of a standard.
19
The point here is that we have an express teaching
20
for combining references in the Funkhouser '95 reference
21
itself.
22
On Funkhouser '93, let me draw attention to page
23
251. The Petitioner is relying on the optimization algorithm
24
obviously in its combination of Funkhouser '95 and
188
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Funkhouser '93, and in particular relying on the optimization
algorithm for this idea of omitting objects.
With regard to object omission, I think what I
heard today is some agreement from the Patent Owner that
Funkhouser '93 does, in fact, omit objects. Take a look at the
record to make sure I didn't mishear that, but I thought there
was finally agreement that it is not just texture that, you
know, like the reference says explicitly, it omits objects such
as books and describes the language it does that.
10
There seemed to be a new argument being
11
advanced about not understanding the value. And, Judge
12
Easthom, I think that you had indicated that it wouldn't make
13
sense that things could be identified as more important or less
14
important.
15
I just want to draw your attention to disclosure in
16
Funkhouser '93. In the context of the optimization algorithm
17
it mentions in the first sentence that we use -- we,
18
Funkhouser -- use the cost and benefit heuristics described
19
above.
20
And one of those -- if one is to look at those
21
described above, you see exactly what you would expect to
22
see and, that is, some disclosure that things could be
23
identified based on importance and how that would be done,
24
and even discussion in the context of a video game.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE BEGLEY: Can you explain how, if we
accept that that is a teaching of the maximum number of
avatars, how you get to the comparison of the actual number
to the maximu m number?
MR. ROSATO: Do you reme mber what claim that
is? I will look at it. Well, I am getting short on time. I can
try to answer your question without looking at the particular
thing. I would say, again, you have this algorithmic
interpretation or application of the Funkhouser optimization
10
and, you know, an algorithmic application of limiting content
11
is going to have a maximum and know if that maximum has
12
been reached or not.
13
So on this whole issue, you know, I would just
14
also urge some level of caution with a lot of the arguments
15
that I heard advanced. I was not able to link a lot of that
16
argument up with expert testimony or any type of objective
17
evidence. It seemed to be a lot of attorney argument.
18
And obviously not all things attorneys say are
19
unreliable, but they are best served when backed up with
20
evidence in the record, and I think that a lot of the argument
21
that was being advanced by Patent Owner is not substantiated
22
in the record.
23
Dr. Zyda provides fairly extensive testimony on
24
the maximum number and how one would impleme nt the
25
Funkhouser '93 optimization algorithm in the context of
190
Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
Funkhouser '95. And I would submit that that is adequate
actually.
JUDGE EASTHOM: So you are saying the
maximu m number is in the '93 implicitly because you want to
send a frame, and if you fill up the frame that's a ma x number,
so by not filling up the frame or making it faster you would
send less? Is that the big picture of what you are saying? I'm
not sure how --
MR. ROSATO: Yeah, so --
10
JUDGE EASTHOM: So that the algorithm is
11
implicitly comparing the lesser number that you could send to
12
go faster with the maximum number that would be the
13
slowest?
14
MR. ROSATO: Well, I mean, I would say that the
15
maximu m number of objects is displayed algorithmically
16
based on the optimization algorithm which bases its
17
determination on parameters such as the value that are
18
assigned to objects and as well as the resources and the
19
desired frame rate.
20
JUDGE EASTHOM: So what is the maximu m
21
number of avatars, what number in the algorithm that you are
22
speaking of?
23
24
25
MR. ROSATO: Well, once the parameters are set,

it would set a limit based on those parameters with objects.
JUDGE EASTHOM: The total number of objects?
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
1
2
MR. ROSATO: The total number of objects. And

in the context of a combination the objects would be avatars.
JUDGE EASTHOM: And then that was my -- I
think that's what I was trying to ask you. I think I understand
what your position is.
So then implicitly the algorithm would say, okay,
we don't want to send everything because it would slow the
process down, the frame rate would be not fast enough, so you
would send less objects/avatars if you made the combination?
10
MR. ROSATO: Yeah, or based on the parameters
11
set you've maxed out. We're cutting it out -- we're cutting it
12
off.
13
14
15
JUDGE EASTHOM: What parameters are you

talking about?
MR. ROSATO: I think the parame ters they talk
16
about are the values assigned to objects, one of the things that
17
we just discussed, they have their cost/benefit heuristics, and
18
there can be values assigned to different objects according to
19
the Funkhouser '93 algorithm.
20
JUDGE EASTHOM: I think your friend's position
21
is we don't know what the values mean there. What do you
22
mean by that?
23
MR. ROSATO: Well, you would have to assign
24
values. That's the point, right? You are assigning values to
25
different objects. You are also -- and essentially you are
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
prioritizing, and then in combination with the other
parameters, such as --
JUDGE EASTHOM: Prioritizing based on -- is
there any -- I think your friend's point was that there is no
idea of what you would even prioritize? How would you
prioritize and what is the basis for the prioritization, I guess?
MR. ROSATO: In the combination?
JUDGE EASTHOM: In the '93, yeah, wherever
9
10
you are getting your motivation to do it.

MR. ROSATO: So the way it is stated in '93, I
11
mean, they give some examples of some types of objects may
12
have more importance than others. And they say, for example,
13
walls might be more important than pencils in a building. So
14
fairly read that is indicating that there is --
15
JUDGE EASTHOM: So how do you transfer that
16
to avatars? What would be a more important avatar? I think
17
that's our argument, right?
18
MR. ROSATO: Exactly. So I think what they are
19
suggesting here in Funkhouser '93 is that there is a degree of
20
flexibility and how you would apply that. So based on what
21
your context is, if walls are deemed more important than
22
pencils, then you can prioritize.
23
24
When moving to a context of Funkhouser '95 you

ma y have a prioritization where, you know, I could imagine
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
different things like, you know, I don't know, some friends are
more important than others. I don't know.
JUDGE EASTHOM: Well, we don't know either.
MR. ROSATO: But that's the point. There are
logical ways in which you would want to set that type of
limitation, if you were to prioritize.
MR. ROSATO: And there is enough sensible ways
9
10
11
12
13
that you would want to do that where it shouldn't fairly be

deemed a restriction on the combination.
JUDGE EASTHOM: Well, we can't use our
commonsense for that.
MR. ROSATO: You can't rely solely on
14
commonsense, but the higher ranking Supreme Court has also
15
told us that we can't abandon commonsense.
16
JUDGE EASTHOM: Thank you.
17
JUDGE CHUNG: At this time we have run out of
18
time. Off the record.
19
(Discussion off the record.)
20
JUDGE CHUNG: At this time --
21
JUDGE BEGLEY: I'm sorry, I'm h aving trouble
22
23
hearing, but I had one last follow-up question for Petitioner.

JUDGE CHUNG: Okay. We're back on the record.
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Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325
JUDGE BEGLEY: Do you have a position on the
priority to the provisional that you had indicated you would
look into?
MR. ROSATO: Yes. Thank you for asking that,
Your Honor. So for purposes of making your task easier, I
would say we are, for purposes of this proceeding, we are not
contesting priority to that provisional.
MR. ROSATO: Yep.
10
JUDGE BEGLEY: I have no further questions.
11
JUDGE EASTHOM: I have none either.
12
JUDGE CHUNG: At this time we are adjourned.
13
14
15
Thank you.
(Whereupon, at 4:26 p.m., the hearing was
adjourned.)
195

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IPR2015- 01264, Paper No. 41

RECORD OF ORAL HEARING

ON BEHALF OF THE PETITIONER:

ON BEHALF OF THE PATENT OWNER:

Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325

JUDGE CHUNG: Please be seated. This is the

hearing for IPR2015-01264, 01268, 01269, 01319, 01321 and

Who do we have for Petitioner?

MR. ROSATO: Thank you, Your Honor. Michael

Rosato for Petitioner. I have at counsel table with me

Mr. Argenti as well as Mr. Brown, who are both co-counsel in

JUDGE CHUNG: Who do we have for Patent

MR. HELGE: Good morning, Your Honor. Wayne

Helge here for Patent Owner, Worlds Inc. At my table here I

have Alan Wright, who is not attorney of record, he will not

be presenting this morning, but he is here from my firm.

JUDGE CHUNG: Each side will have two and a

half hours to present their arguments. Petitioner can reserve

Would the Petitioner like to reserve any rebuttal

JUDGE CHUNG: An hour rebuttal time?

MR. ROSATO: Yes.

Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325

JUDGE CHUNG: Okay. At the conclusion of

Petitioner's presentation, not including their rebuttal time, we

will take a break for lunch.

At this time the Panel also respectfully requests

each party to speak clearly into the microphone. One of the

Panel me mbers is sitting remotely. And when discussing the

I would like to introduce the Panel me mbers.

With me today are Judges Karl Easthom and Kerry

And I would also like to add that if any of the

parties would like to have -- would like to get up in the

middle of the presentation to use the facilities, please do so

quietly at around 11 o'clock to minimize disturbances.

At this time Petitioner may proceed.

MR. ARGENTI: May I approach?

JUDGE CHUNG: You ma y.

MR. ROSATO: As a housecleaning issue, Your

hearing be held in reserve until the end or during the

presentation? I have had panels request the former, but just a

JUDGE CHUNG: If I understand your question

correctly, you are asking whether or not to reserve objections

until the end or --

Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325

MR. ROSATO: Exactly, just so counsel is not -- I

wouldn't want to interrupt counsel. I'm happy to wait until

the end of their speaking to note any objections that ma y

arise. If that's acceptable to the Panel, I will take that

JUDGE CHUNG: I would prefer not to have

MR. ROSATO: I would, too, Your Honor, but if

JUDGE CHUNG: Okay.

MR. ROSATO: Okay. Well, as an initial matter

I'm going to be referring to the demonstrative

exhibits. And in order to try to address the issues, primarily

address the issues that are in dispute between the parties, I

ma y move among the slide deck and, Judge Begley, I will

make a point of referencing the slides so it is easy for you to

I'm going to start with reference to slide 2. And

as everyone knows, there are five patents being challenged

here, six IPRs. The identification of those patents, the IPR

docket numbers and the corresponding instituted grounds of

challenge are presented in the slides at slides 2 through 6.

Case Nos. IPR2015-01264, 01268, 01269, 01319, 01321, and 01325