Valve Corp v. Electronic Scripting Products Inc

1. Case Identification

• Case #: IPR2019-00064
• Patent #: 8,553,935
• Filed: October 10, 2018
• Petitioner(s): Valve Corporation
• Patent Owner(s): Electronic Scripting Products, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Determining Pose of a Manipulated Object
• Brief Description: The ’935 patent discloses methods and systems for determining the absolute pose (position and orientation) of a manipulated object in a three-dimensional environment. The system uses an on-board photodetector to receive light from a plurality of external light sources with known positions and an on-board relative motion sensor to detect changes in orientation, combining both data sets to calculate the object's pose relative to world coordinates.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maeda - Claims 1-21 are obvious over Maeda.

• Prior Art Relied Upon: Maeda (a 2004 article titled "Tracking of User Position and Orientation by Stereo Measurement of Infrared Markers and Orientation Sensing").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Maeda, a single reference, discloses every limitation of the challenged claims. Maeda describes a system for tracking a user's pose using a helmet (the "manipulated object") equipped with on-board stereo cameras with infrared filters (the "photodetector") and an orientation sensor composed of gyros and inertial sensors (the "relative motion sensor"). The system tracks external infrared LED markers ("predetermined light sources") placed at known locations ("world coordinates") to determine the helmet's pose. Maeda explicitly teaches combining the optical data (from light sources) with the inertial data (from the orientation sensor) via an Extended Kalman Filter to calculate the helmet's full six-degree-of-freedom (6DOF) pose.
  • Key Aspects: Petitioner contended that Maeda's helmet system, which tracks a user's head movement to overlay augmented reality information on a head-mounted display (HMD), directly corresponds to the method and system claims of the ’935 patent. Dependent claims related to predetermined patterns of light sources (claims 2-3, 14-15), the use of IR LEDs (claims 4, 16), and rendering images on a display (claims 5-10, 17-20) were also argued to be expressly taught or made obvious by Maeda's disclosure of "Fiducial Beacons" arranged in a plus-sign pattern and its use of an HMD for augmented reality navigation.

Ground 2: Obviousness over Maeda in view of Welch-HiBall - Claims 11 and 21 are obvious over Maeda in view of Welch-HiBall.

• Prior Art Relied Upon: Maeda and Welch-HiBall (a 2001 article titled "High-Performance Wide-Area Optical Tracking: The HiBall Tracking System").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claims 11 and 21, which recite that the "manipulated object" is selected from a group of handheld items like wands, 3D mice, game controls, and digitizers. Petitioner argued that while Maeda discloses a helmet and a generic handheld mouse, Welch-HiBall explicitly teaches applying a similar "inside-out" optical tracking system to a wide variety of such handheld objects. Welch-HiBall describes mounting its tracker, the HiBall, on objects including a "pencil-shaped fiberglass wand," a "handheld interaction device," and "handheld pneumatic drills" to track their precise pose. The combination therefore rendered the claimed Markush group of objects obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references because they are from the same field of 6DOF pose tracking for virtual and augmented reality applications. A POSITA would have been motivated to apply Maeda's advanced hybrid optical-inertial tracking technique to the various handheld input devices taught by Welch-HiBall to improve user interaction. For example, Maeda’s own disclosure of using a handheld device to interact with a 3D map would naturally lead a POSITA to consider more ergonomic and precise tools for that purpose, such as the wands and probes described in Welch-HiBall.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination. Both references describe functioning, well-documented tracking systems. Applying Maeda's sensor fusion techniques to a different manipulated object, as suggested by Welch-HiBall, was a predictable substitution of one known element (a helmet) for another (a handheld wand) to achieve a known result (ergonomic 3D input).

4. Key Claim Construction Positions

• "Manipulated Object": Petitioner proposed this term be given its plain and ordinary meaning, which should not exclude a head-mounted sensor system. This construction was supported by the ’935 patent’s own specification, which describes an embodiment where "glasses" constitute the manipulated object, making Maeda’s helmeted system directly applicable.
• "Photodetector": Petitioner proposed this term be construed as a device that detects light, including cameras with CCD or CMOS sensors. This was based on the patent’s specification stating the photodetector can be "any type of suitable light-sensitive sensor" and its extensive reference to prior art systems using cameras. This construction encompasses the stereo cameras used in Maeda.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner dedicated significant argument to establishing that the ’935 patent was not entitled to its earliest claimed priority date of January 30, 2004, from the ’484 application. Petitioner contended that crucial limitations—including the combination of light data with relative motion data, the use of predetermined light sources, and arranged light patterns—were absent from the ’484 application and constituted new matter added in later filings. Establishing a later priority date (e.g., March 8, 2006) was essential for Maeda (2004) and Welch-HiBall (2001) to qualify as prior art under 35 U.S.C. §102.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core argument was that the primary prior art references, Maeda and Welch-HiBall, presented new grounds of rejection that were never considered by the Examiner during the prosecution of the ’935 patent or its predecessors. Petitioner asserted that even if a different article by Welch was cited in an Information Disclosure Statement (IDS), there was no evidence the Examiner considered the specific teachings relied upon in the petition.

7. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-21 of Patent 8,553,935 as unpatentable.