## Facts

- Worlds, Inc. developed early three-dimensional, multi-user virtual-world software, including “Worlds Chat” and “AlphaWorld.”
- Worlds asserted five related patents covering scalable, client-server virtual-world technology with avatar interaction and server-side filtering (“crowd control”): U.S. Patent Nos. 7,181,690; 7,493,558; 7,945,856; 8,082,501; and 8,145,998.
- The asserted patent family traced back to a 1995 provisional application and a 1996 nonprovisional that issued as U.S. Patent No. 5,740,045.
- The 1996 patent and the 2000 continuation (the ’690 patent) did not include a specific, express claim of priority to the 1995 provisional; later continuations (beginning in 2006) did.
- Activision (including related entities) published multiplayer games alleged to practice the patented technology; Activision moved for summary judgment that the asserted claims were invalid under the § 102(b) public-use bar.
- Worlds’ products were commercially and publicly used more than one year before the 1996 filing date and, on the record presented, practiced the asserted claim limitations.

## Issues

1. Whether the asserted patents were entitled to the 1995 provisional filing date despite missing priority references in intervening applications in the continuation chain.
2. If not entitled to the 1995 date, whether Worlds’ pre-critical-date commercial/public deployment of Worlds Chat and AlphaWorld constituted invalidating “public use” under 35 U.S.C. § 102(b).
3. Whether Worlds raised a genuine dispute of material fact sufficient to defeat summary judgment on priority and public use.

## Decision

- The court granted Activision’s motion for summary judgment of invalidity under 35 U.S.C. § 102(b) as to the asserted claims.
- The court held the patents-in-suit could not claim the 1995 provisional’s benefit because the priority chain was broken by the failure of earlier applications to make a proper specific reference to the provisional.
- With an effective filing date no earlier than the 1996 filing, Worlds’ own commercial/public use more than one year earlier was outside the grace period and barred the claims.
- The court found Worlds did not present evidence creating a genuine issue for trial on the priority defect or on whether the earlier products met the claim limitations and were publicly used before the critical date.

## Legal Principles

- A later application obtains an earlier filing date only by satisfying the statutory and regulatory conditions for priority, including a clear, specific reference to the earlier application; each link in a continuation chain must comply.
- References to an earlier application in prosecution-history materials do not substitute for a proper priority claim in the application/patent itself for purposes of establishing an unbroken priority chain.
- Under pre-AIA 35 U.S.C. § 102(b), an invention in public use more than one year before the effective filing date invalidates the claim, including when the public use is by the patentee.
- On summary judgment, once the movant shows no genuine dispute of material fact on invalidity, the nonmovant must produce specific admissible evidence creating a triable issue.

## Conclusion

The court held that strict priority-claim formalities prevented the asserted continuations from reaching the 1995 provisional date, making Worlds’ own pre-critical-date public commercialization of the claimed technology an invalidating public use under § 102(b) and warranting summary judgment of invalidity.


Worlds, Inc. v. Activision Blizzard, Inc., No. 12-cv-10576, 2014 WL 972135 (D. Mass. Mar. 13, 2014)