PTAB (Patent Trial and Appeal Board) Dismisses All Remaining Inter Partes Review Proceedings Brought Against Worlds, Inc. by Bungie, Inc.
All Patent Claims Returned to Worlds, Inc.
BOSTON, MA / ACCESSWIRE / January 15, 2020 / Worlds, Inc. (OTCQB:WDDD) ("Worlds" or the "Company"), a leading intellectual property developer and licensee of patents related to 3D online virtual worlds, is pleased to announce that on January 14, 2020, the U.S. Patent Trial and Appeal Board (PTAB) issued a Notice that it has dismissed three remaining Petitions for inter partes review, filed by Bungie, Inc., against patents owned by Worlds Inc. in IPR Case Nos. 2015-01264, -01319, and -01321. The Board also vacated its prior Decisions to Institute in these cases, and terminated the inter partes review proceedings initiated by Bungie without issuing final written decisions.
Thom Kidrin, Worlds' Chief Executive Officer, commented, "We are pleased with the PTAB's decision to dismiss Bungie's remaining Petitions for inter partes review against Worlds' patents, thereby reinstating all of our claims in these cases. Worlds has had to endure the legal and financial gauntlet at the PTAB and Federal Circuit for over 4 ½ years while combating the challenges brought by Bungie, but we have ultimately prevailed with important claims intact in each challenged patent, and will return to the District Court in our case against Activision. The PTAB in the end agreed with Worlds' argument that the evidence revealed a relationship between Bungie and Activision, and that relationship prohibited Bungie from challenging Worlds' patents many years after the Activision litigation began. With Bungie's remaining petitions now dismissed, we will move forward and assert our patents against all parties that are infringing upon them."
This Notice followed from the September 7, 2018 decision of the U.S. Court of Appeals for the Federal Circuit, who previously vacated the Board's previous final written decisions in these three cases, and remanded the cases to the Board with instructions to:
- consider whether Worlds is estopped from arguing the issue of Real Party in Interest ("RPI") in these proceedings, and
- reevaluate the merits of Worlds' argument that Bungie is time-barred from filing petitions for inter partes review based on its relationship with Activision, who has been in litigation with Worlds on the subject patents since 2012.
The relevant statute, 35 U.S.C. § 315(b), prohibits a party from filing a petition for inter partes review more than one year after itself or an RPI was served with a complaint on the subject patent(s). Worlds argued to the Board that if Activision was an RPI to Bungie's petitions, then Bungie was not permitted to file its original petitions in 2015. As of February 22, 2019, this briefing on remand before the Board had been complete, with Worlds awaiting the Board's decision on these questions. Further, Worlds' infringement claims against Activision on these patents have been stayed pending completion of the Board's review.
The Board's Notice states that it has completed its review of the questions posed by the Federal Circuit, and determined both questions in Worlds' favor. The Board determined first that Worlds is not estopped from arguing the RPI on remand, and second that Bungie's Petitions were time-barred and must be dismissed.
The Board's Notice also states that the detailed Termination findings are currently under seal pending the identification of any confidential materials by the parties. However, a public version of the Termination document will be released no later than ten (10) business days from its issue date.
Worlds, Inc. (OTCQB: WDDD), is a leading intellectual property developer and licensee of patents related to 3D online virtual worlds. The Company has a portfolio of 10 US patents for multi-server technology for 3D applications. The earliest of these patents issued on an application filed November 12, 1996. A provisional patent application, serial number 60/020,296, was filed on November 13, 1995. These patents are related to each other and disclose and claim systems and methods for enabling users to interact in a virtual space.
For additional information about Worlds, Inc., please visit: www.Worlds.com.
This release contains certain forward-looking statements and information relating to Worlds Inc. that are based on the beliefs of Worlds' management, as well as assumptions made by and information currently available to the Company. Such statements reflect the current views of the Company with respect to future events including estimates and projections about its business based on certain assumptions of its management, including those described in this Release. These statements are not guarantees of future performance and involve risk and uncertainties that are difficult to predict. Additional risk factors are included in the Company's public filings with the SEC. Should one or more of these underlying assumptions prove incorrect, actual results may vary materially from those described herein as "hoped," "anticipated," "believed," "estimated," "should," "preparing," "expected" or words of a similar nature. The Company does not intend to update these forward-looking statements.
SOURCE: Worlds Inc.
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