Valve Corporation v. Electronic Scripting Products, Inc.

1. Case Identification

• Case #: IPR2019-00084
• Patent #: 9,235,934
• Filed: October 12, 2018
• Petitioner(s): Valve Corporation
• Patent Owner(s): Electronic Scripting Products, Inc.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Computer Interface Employing a Wearable Article with an Absolute Pose Detection Component
• Brief Description: The ’934 patent describes a system for determining the absolute pose (position and orientation) of a manipulated object. The technology is an "inside-out" tracking system where a photodetector on a wearable object detects a plurality of external light sources arranged in a known, fixed pattern to calculate the object's pose in a three-dimensional environment.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over Maeda II in view of Maeda I.

• Prior Art Relied Upon: Maeda II (a January 2004 article by Maeda et al. titled "A Wearable AR Navigation System using Vision Based Tracking with Infrared") and Maeda I (a March 2003 article by the same authors titled "Proposal of a Three-dimensional User Position and Orientation Detection Technique Using Infrared Identifiers for a Wearable System").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Maeda I and Maeda II (the "Maeda Combination") teaches all limitations of the challenged claims. Both references disclose hybrid, inside-out tracking systems for wearable computing. Specifically, they teach a wearable article (a helmet with a head-mounted display, or HMD) equipped with a photodetector (a stereo camera) and an auxiliary motion sensor (a gyro sensor). This wearable article tracks its position and orientation by detecting a plurality of predetermined infrared light sources (beacons) disposed in a known pattern in the environment. A controller (a user-worn PC) processes the photodetector data to determine the pose of the wearable article. Petitioner contended this maps directly to independent claims 1 and 7. The dependent claims are also taught, as the Maeda Combination explicitly discloses deployment in an augmented reality (AR) application, the use of glasses (a clip-on display), and the inclusion of an auxiliary motion detection component (a gyro/orientation sensor).
  • Motivation to Combine: A POSITA would combine Maeda I and Maeda II because they were written by the same authors, describe sequential work on the same ongoing project, and are in the same field of pose tracking. Critically, Maeda II explicitly cites Maeda I as a baseline system and describes itself as an "improvement over the method described in [Maeda I]," providing a clear and explicit reason to combine their teachings.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining the references. Maeda II not only proposed the combination as an improvement but also documented its successful implementation and methodology, removing any need for undue experimentation.

4. Key Claim Construction Positions

• "Photodetector": Petitioner proposed the plain and ordinary meaning, "a device that detects light." It argued this term encompasses not only position-sensitive detectors (PSDs) but also the CCD or CMOS-based cameras described in the prior art, consistent with the patent's specification which admits such sensors are "well-known."
• "Derivative pattern": Petitioner proposed this term means "the pattern formed by the positions of light beams measured by one or more photodetectors from multiple light sources disposed in a known pattern." The argument was that this term refers to the predictable perspective transformation of the light source pattern as viewed by the moving photodetector and does not require a specific or novel algorithm, a position allegedly supported by the prosecution history.
• "Auxiliary motion detection component": Petitioner proposed this term should be construed to include at least an inertial sensing device, such as a gyroscope or accelerometer, as described in the specification and taught by the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: A central contention of the petition was that the '934 patent is not entitled to its earliest claimed priority date of January 30, 2004, from the '484 application. Petitioner argued that the '484 application fails the written description and enablement requirements for key limitations added in later applications, such as the "plurality of predetermined light sources," the "wearable article," and the "derivative pattern."
• Prior Art Status: The invalid priority claim is critical because, if successful, it establishes that Maeda I (March 2003) and Maeda II (January 22, 2004) pre-date the '934 patent's effective filing date, making them valid prior art references under pre-AIA 35 U.S.C. §102. The entire obviousness argument rests on this contention.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should decline to exercise its discretion to deny institution under §325(d). It contended that this petition presented new grounds of rejection based on prior art (Maeda I and Maeda II) that was not considered by the Examiner during prosecution.
• Further, Petitioner argued that the art and arguments in this petition were substantially different from those in other IPRs filed against the '934 patent (IPR2018-01031, IPR2019-00062, etc.). Those proceedings relied on different references (e.g., "Welch-HiBall" or a later Maeda publication) and did not rely on the priority date challenge that makes Maeda I and Maeda II available as prior art.

7. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-12 of the ’934 patent as unpatentable.