Worlds, Inc. v. Activision Blizzard, Inc.

When Worlds, Inc. submitted its patent applications, it did not contain the required reference to its earlier filed provisional application and was not entitled to the priority date of the provisional application. Without that earlier priority date, Worlds invention was in public use more than one year before the priority date of its patent.

Opinion (Casper): Worlds, Inc. sued Activision Blizzard Inc. alleging infringement of five of its patents. Each of the patents is part of a chain of continuations that ultimately began with Patent No. 6,219,045. Worlds filed a Provisional Application on Nov. 13, 1995, and filed the application for the ‘045 patent on Nov. 12, 1996. The ‘045 patent does not claim priority from an earlier filed application or make reference to the the Provisional Application. By April 1995, Worlds offered a public product embodying all of the patent claims asserted in this case. Activision moved for summary judgment that the asserted claims were invalid. A person is not entitled to a patent if the claimed invention was in public use before the critical date of the invention. The critical date is the date one year before the invention’s priority date. The priority date is normally the date the patent application was filed unless the patentee can claim the priority date of an earlier application. Under the statute in force when the ‘045 patent was filed, a patent application for an invention disclosed in a prior filed provisional application can claim the date of the provisional application if the application is filed within one year of the provisional application and the application makes a specific reference to the provisional application. The regulations require that the reference to the provisional application appear in an Application Data Sheet or within the first sentence of the patent application. The first sentence of the ‘045 patent does not contain a reference to the Provisional Application and Worlds did not file an Application Data Sheet. Accordingly, the court held that the effective date of the ‘045 patent was Nov. 12, 1996, and its critical date was Nov. 12, 1995. Because each of the asserted patents was a continuation of a chain of patents beginning with the ‘045 patent, none of the asserted patents has a critical date prior to Nov. 12, 1995. Additionally, all of the asserted patent claims were in public use prior to the critical date of the asserted patents, so the court held that all of the asserted claims were invalid. Motion for summary judgment was GRANTED to Activision Blizzard, Inc.