Niantic Inc v. Blackbird Tech LLC

1. Case Identification

• Case #: IPR2019-00489
• Patent #: 9,802,127
• Filed: December 20, 2018
• Petitioner(s): Niantic, Inc.
• Patent Owner(s): Blackbird Tech LLC
• Challenged Claims: 1-24

2. Patent Overview

• Title: Location-Based Augmented Reality Video Game
• Brief Description: The ’127 patent relates to methods and systems for incorporating location-based information into a video game. The technology involves receiving a user's physical location, capturing camera images of that location, and mapping those images into a virtual game environment where the user simultaneously encounters real-world objects and virtual game objects. The patent also describes storing the user's location when the game is not executing.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mullen in view of Mullen-022 - Claims 1-3, 8-10, 15-18, and 23-24 are obvious over Mullen in view of Mullen-022.

• Prior Art Relied Upon: Mullen (Application # 2006/0105838) and Mullen-022 (Application # 2005/0049022).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mullen disclosed a location-based, augmented reality (AR) game system on a handheld device. This system used a GPS to determine the user's location and a camera to capture the physical environment, which was then displayed with superimposed virtual indicia (e.g., game characters). Petitioner contended that Mullen-022, which was incorporated by reference into Mullen and filed by the same inventor, explicitly taught the key limitation of storing a user's location when the game is not executing and retrieving that "origin location" from memory upon game startup. The combination of Mullen's AR game system with Mullen-022's save-state functionality allegedly rendered the independent claims obvious.
  • Motivation to Combine: A POSITA would combine Mullen and Mullen-022 because they were directed to the same location-based game system, shared an inventor, and Mullen expressly incorporated Mullen-022 by reference. The primary motivation was to improve the user experience by allowing a player to continue playing from where they left off, a predictable and desirable feature for any game. Modifying Mullen to include the startup routine from Mullen-022 would be a straightforward implementation.
  • Expectation of Success: Because both references described similar hardware configurations (e.g., handheld devices with GPS) and addressed the same field of technology, a POSITA would have had a high expectation of success in combining their teachings to create an improved, persistent game experience.

Ground 2: Obviousness over Mullen/Mullen-022 in view of Annambhotla - Claims 4-7, 11-14, and 19-22 are obvious over Mullen, Mullen-022, and Annambhotla.

• Prior Art Relied Upon: Mullen (Application # 2006/0105838), Mullen-022 (Application # 2005/0049022), and Annambhotla (WO 2012/026936 and Application # 2012/0052953).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1. Petitioner argued that Annambhotla taught a location-based computer game that "leverages location information" to alter virtual game elements based on real-world locations. Crucially, Annambhotla disclosed receiving map information (including streets, buildings, and points of interest) over a network from a remote database, such as Google Maps. This teaching allegedly supplied the limitations of claims 4, 11, and 19, which required receiving map information from a remote source.
  • Motivation to Combine: A POSITA would combine Annambhotla's teachings with the Mullen/Mullen-022 system to enhance the game's realism and functionality. Using commercially available map databases like Google Maps would be more efficient and less error-prone than Mullen's suggestion of pre-scanning a physical environment. It would also enable features suggested in Mullen, such as location-based advertising, by providing a ready-made database of commercial points of interest. Petitioner noted that using map data in location-based games was "not a new concept" at the time.
  • Expectation of Success: There was a reasonable expectation of success because integrating map data via APIs from services like Google Maps was a well-known technique for software developers. Applying this known technique to the location-based game of Mullen/Mullen-022 to provide real-world context would yield predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that this petition was not cumulative to a simultaneously filed petition challenging the same claims of the ’127 patent. The petitions were asserted to be distinct because they relied on different primary prior art references (Mullen versus Baronoff). Furthermore, the legal bases for the references' prior art status were different (Mullen as §102(b) art vs. Baronoff as §102(e) art), which could impact a patent owner's ability to "swear behind" the reference dates.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’127 patent as unpatentable.