Worlds, Inc. v. Activision Blizzard, Inc.
1:12-cv-10576
| D. Mass. | Mar 18, 2022Background
- Worlds, Inc. sued Activision alleging infringement of multiple claims across five patents covering videogame technology; claims were repeatedly narrowed during litigation.
- In 2014 the Court granted summary judgment invalidating asserted claims based on Worlds’s prior public use; later some claims were held indefinite after a Markman ruling.
- Bungie filed IPR petitions; the PTAB found several claims unpatentable, but the Federal Circuit vacated those PTAB decisions on the ground Activision should have been named a real party in interest, and the PTAB later vacated its institution decisions.
- The case was stayed 2016–2020 for IPR proceedings and appeal; after the stay the parties renewed briefing and in April 2021 the Court granted Activision’s renewed §101 summary judgment and entered judgment for Activision.
- Activision sought attorney’s fees under 35 U.S.C. § 285 for the post‑stay period; Worlds moved to disallow items in Activision’s amended bill of costs.
- The Court denied Activision’s fee motion (no clear and convincing evidence of an "exceptional" case) and taxed costs to Activision in the amount of $17,780.47 after disallowing rough deposition transcript charges.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether this case is "exceptional" under 35 U.S.C. § 285 so as to award attorneys’ fees | Worlds contends its positions were legally plausible and litigation conduct did not warrant fees | Activision argues Worlds pursued objectively weak §101 and prior‑art claims and engaged in discovery delay, so fees are warranted | Denied: court found Activision failed to prove exceptionality by clear and convincing evidence considering totality of circumstances |
| Timeliness of Activision’s amended bill of costs | Worlds argued the bill was premature and should await appeal disposition | Activision filed within Court practice window and the Federal Circuit affirmed, mooting timeliness objections | Denied as moot: filing premature argument moot after appeal affirmance |
| Whether Activision’s alleged misconduct (including failure to disclose RPI in IPRs) precludes recovery of costs | Worlds asserted misconduct should bar costs | Activision’s conduct not shown to be sufficient misconduct to overcome strong presumption favoring cost recovery | Denied: misconduct insufficient to defeat cost award |
| Recoverability of specific cost items (service, depositions, rough transcripts, hearing transcripts, witness fees) | Worlds sought disallowance of various line items (service, many deposition items, rough transcripts, hearing transcripts, witness fees) | Activision sought full amount requested; argued depositions and hearing transcripts were necessary for litigation and appeal | Partial allowance: awarded $17,780.47; denied recovery for rough deposition transcripts but allowed service, deposition costs (where necessary), hearing transcripts, and witness fees tied to depositions |
Key Cases Cited
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (defines "exceptional" and standard for awarding fees under § 285)
- Therasense, Inc. v. Becton, Dickinson & Co., 745 F.3d 513 (Fed. Cir.) (deference and totality‑of‑circumstances standard for § 285)
- Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330 (Fed. Cir.) (courts must consider conduct of the fee‑seeking prevailing party)
- Digeo, Inc. v. Audible, Inc., 505 F.3d 1362 (Fed. Cir.) (movant bears clear and convincing burden to show exceptionality)
- Alyeska Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S. 240 (framework that prevailing litigant ordinarily does not recover attorney’s fees)
- Taniguchi v. Kan Pacific Saipan, Ltd., 566 U.S. 560 (costs generally allowed to prevailing parties under Rule 54(d))
- Rimini Street, Inc. v. Oracle USA, Inc., 139 S. Ct. 873 (Supreme Court) (limits on types of taxable costs under §§ 1821 and 1920)
- San Juan Dupont Plaza Hotel Fire Litig., 994 F.2d 956 (1st Cir.) (presumption favoring cost recovery for prevailing parties)
- Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir.) (vacatur of PTAB institution decisions based on real‑party‑in‑interest issue)
- Templeman v. Chris‑Craft Corp., 770 F.2d 245 (1st Cir.) (deposition costs recoverable when necessarily obtained for use in the case)
- Brigham & Women’s Hosp., Inc. v. Perrigo Co., 395 F. Supp. 3d 168 (D. Mass.) (rough transcript costs are not recoverable)
- Roggio v. Grasmuck, 18 F. Supp. 3d 49 (D. Mass.) (service and subpoena costs recoverable under 28 U.S.C. § 1920)