In the complaint, Worlds accuses Microsoft and its “Minecraft” video game product of infringing Worlds' U.S. Patent No. 8,082,501, titled “System and Method for Enabling Users to Interact in a Virtual Space” (the “’501 Patent”).
The ’501 Patent was previously asserted against Activision Blizzard, Inc., though that litigation was temporarily suspended after the patent’s validity was challenged in 2015 in an inter partes review petition filed by Bungie, Inc. with the U.S. Patent & Trademark Office’s Patent Trial and Appeal Board (PTAB). The defense of the ’501 Patent included a trip to the U.S. Court of Appeals for the Federal Court (CAFC), where Worlds’ legal team, led by Wayne M. Helge of Davidson, Berquist, Jackson & Gowdey, LLP (DBJG), convinced the CAFC that the PTAB had applied an incorrect test as part of its analysis. Finally, on January 14, 2020, the ’501 Patent emerged from the inter partes review process with all claims intact.
“Our expert legal team at DBJG defended the ’501 Patent before the PTAB, and convinced the CAFC to reverse and remand unfavorable PTAB decisions against Worlds’ patents," stated Thom Kidrin, Worlds Inc. CEO. “The CAFC’s ruling instructed the PTAB to reconsider the methods it used to evaluate the relationship between Activision and Bungie, and provided strong guidance on the rules to follow on remand. In January of this year, the PTAB dismissed all of Bungie’s challenges against the ’501 Patent. Then in April, Worlds successfully convinced the U.S. District Court in Massachusetts to lift the stay on Worlds’ active litigation against Activision, and that case is now proceeding toward trial. Meanwhile, Worlds asserted another of its patents against Linden Lab’s “Second Life” product. Bringing this latest case against Microsoft is the next step in our ongoing process of enforcing Worlds’ intellectual property rights against companies that have been using our proprietary technology.”
In addition to DBJG, Worlds has the experienced litigation team at the Etheridge Law Group of Southlake Texas, including Jim Etheridge and Ryan Loveless, providing support in enforcement of Worlds’ patent rights.
Kidrin noted, “Our ’501 Patent is a fundamental building block to the functionality and success of numerous 3-D, computer-generated, multi-user, interactive virtual world systems and games that have been developed over multiple years and are enjoyed by millions of people globally. While we are excited by the popularity of these games, we want to ensure that we and our shareholders receive just compensation for the system and method we developed that helped make these types of products possible.”