Valve Corporation v. Electronic Scripting Products, Inc.

1. Case Identification

• 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: System for 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. The system employs an "inside-out" optical tracking configuration where a photodetector mounted on the manipulated object detects light from a plurality of external light sources having known, fixed positions in the environment to calculate the object's pose.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Anderson (Patent 7,063,256).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Anderson teaches every limitation of the challenged claims. Anderson discloses a head-mounted display (HMD) device—argued to be a "manipulated object"—that includes an onboard camera ("photodetector") and an inertial sensor ("relative motion sensor"). This HMD determines its own six-degree-of-freedom pose by detecting external optical light beacons ("plurality of predetermined light sources") at known, fixed locations in world coordinates. A processor on the HMD accepts light data from the camera and motion data from the inertial sensor to calculate the pose relative to the world coordinates defined by the beacons. This mapping directly addresses the limitations of independent claims 1 (method) and 12 (system), and Petitioner contended the dependent claims merely recite further conventional features also taught by Anderson, such as using IR LEDs and displaying an image.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, Petitioner asserted that Anderson alone teaches the complete combination of claimed elements. Anderson explicitly teaches combining optical tracking data with inertial sensor data to determine the pose of a manipulated object (the HMD).
  • Expectation of Success (for §103 grounds): Petitioner argued that Anderson discloses a functioning, integrated system, thereby demonstrating that a person of ordinary skill in the art (POSA) would have had a complete expectation of success in implementing the claimed invention.

Ground 2: Obviousness over Anderson in view of AAPA and/or Welch-HiBall - Claims 6, 11, 18, and 21 are obvious over Anderson in view of Applicant Admitted Prior Art (AAPA) and/or Welch-HiBall.

• Prior Art Relied Upon: Anderson (Patent 7,063,256), Applicant Admitted Prior Art (AAPA) from the ’935 patent specification, and Welch-HiBall (a February 2001 article in Presence: Teleoperators and Virtual Environments).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Anderson’s disclosure of a pose-tracking system and adds Welch-HiBall and AAPA to address specific dependent claims. Welch-HiBall describes a high-performance optical tracking system (the "HiBall") that can be mounted on various handheld objects, such as wands, probes, and drills, to determine their pose. Petitioner argued this teaches the limitation in claims 11 and 21 of applying the tracking system to objects like wands, remote controls, and other handheld tools. The AAPA, cited in the ’935 patent itself, also expressly teaches the use of 3D mice as manipulated objects. For claims 6 and 18, which require defining pose using Euler angles, Petitioner contended that Anderson’s 6DOF tracking inherently determines rotational information, and that Euler angles are a well-known, conventional method for representing such orientation, as acknowledged in the ’935 patent itself.
  • Motivation to Combine (for §103 grounds): A POSA would combine Anderson with Welch-HiBall to apply Anderson's robust tracking technology to a wider variety of manipulated objects beyond HMDs. Since both references operate in the same field (optical pose tracking for virtual/augmented reality) and solve the same problem, it would have been an obvious design choice to use Anderson's system to track the types of handheld tools explicitly disclosed in Welch-HiBall to improve commercial applications like product assembly or logistics, which both references contemplate.
  • Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success because both Anderson and Welch-HiBall describe functioning systems. Combining them would involve the predictable application of Anderson's tracking method to a different, but well-known, type of tracked object.

4. Key Claim Construction Positions

• "Manipulated Object": Petitioner argued this term should be given its plain and ordinary meaning and should not exclude a head-mounted sensor system. The ’935 patent specification itself describes an embodiment where "glasses" are the manipulated object (Fig. 23), and Anderson’s HMD is a wearable set of glasses moved by a user. This construction is critical to mapping Anderson onto the claims.
• "Photodetector": Petitioner asserted this term should mean a device that detects light, including a camera with a CCD or CMOS sensor, as described in the ’935 patent. This construction allows Anderson’s "beacon detection device," which is a camera, to meet the "photodetector" limitation.
• "Relative motion sensor": Petitioner proposed this term be construed to include an inertial sensing device like an accelerometer or gyroscope. This allows Anderson’s "inertial sensors" or "orientation sensor" to satisfy the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the primary references, Anderson and Welch-HiBall, were never considered by the Examiner during the prosecution of the ’935 patent or its predecessors. Petitioner noted that while a different Welch article was listed on an Information Disclosure Statement (IDS), it did not contain the key disclosures of Welch-HiBall, and mere citation on an IDS does not constitute substantive consideration. Petitioner further pointed to a decision in a parallel IPR on the ’935 patent (IPR2018-01032), where the Board had already determined that Welch-HiBall presented new grounds not previously considered by the USPTO.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-21 of Patent 8,553,935 as unpatentable.