Microsoft in Legal Battle with Worlds Inc. Over Alleged Patent Infringement in Minecraft

Worlds Inc. v. Microsoft Corp.
Case No. 6:20-cv-00872
United States District Court for the Western District of Texas
Filed September 25, 2020

Worlds Inc. (“Worlds”) filed suit on September 25th against Microsoft Corp. (“Microsoft”) alleging that Microsoft’s video game Minecraft infringes its U.S. Patent No. 8,082,501 (“the ’501 Patent”). In response, on December 3rd, Microsoft filed a petition for inter partes review (“IPR”) of the ’501 Patent, seeking to invalidate the majority of its claims.

The ’501 Patent is directed to methods that enable users to interact in a 3D virtual world in which each user is able to view the virtual world from their own perspective, such as through a customizable avatar. These avatars are visible to other nearby users in the virtual world and are updated to reflect the motion, rotation, and positioning of users’ avatars.

Worlds asserts that Microsoft has infringed claims 1, 2, 5, and 10 of the ’501 Patent. Worlds claims that Minecraft infringes claim 1 because Minecraft allows users to interact with each other in a virtual space through customizable avatars. Worlds asserts that claim 2 is infringed because Minecraft monitors the orientation of a user’s avatar, that claim 5 is infringed because it provides a user with orientation information of some of the other users’ avatars, and that claim 10 is infringed because it allows a user to limit the number of other users’ avatars that are displayed.

Microsoft filed a petition for IPR of claims 1-8, 10, 12, and 14-16 of the ’501 Patent. The Patent Trial and Appeal Board held in a previous IPR of the same patent (which we covered here), brought by Bungie, Inc. (“Bungie”), that claims 1-6, 12, 14, and 15 were unpatentable. However, the Board vacated its decision after finding that Bungie was procedurally barred from filing its petition. Microsoft argues that because the Board did not vacate its decision based on the merits, “they remain sound,” so Microsoft is asserting the same prior art that Bungie previously raised. Although Microsoft formerly owned Bungie, because Bungie was sold off long ago in 2007, no real-party-in-interest time bar issues are raised.

Microsoft argues that there are several pieces of prior art, listed in its petition, that invalidate the ’501 Patent, saying that “virtual reality systems utilizing client/server network architecture were known prior to the alleged invention of the ’501 patent, as were the server-side filtering and client processing that are the focus of the ’501 patent claims.”

We will continue to track and provide updates on legal developments surrounding the ’501 Patent.