Niantic, Inc. v. Blackbird Tech LLC

1. Case Identification

• 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 Gaming
• Brief Description: The ’127 patent is directed to location-based video games that add location information into the game environment. The system receives a user's physical location, obtains camera images of that location, and maps the image data into the game's virtual environment as a video, allowing the user to experience real-life objects alongside virtual objects.

3. Grounds for Unpatentability

Ground 1: 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 discloses the core elements of the challenged claims, including a location-based augmented reality (AR) game system on a handheld device that uses a GPS receiver and a camera. Mullen's system captures the physical environment and displays it with superimposed virtual objects. The key limitation at issue during prosecution was "storing...said second position indicator in said memory when said video game is not executing." While Mullen teaches storing a location history, Petitioner contended that Mullen-022, which is incorporated by reference into Mullen, explicitly teaches this missing element. Mullen-022 describes a process where, upon game startup, an "origin location" is retrieved from memory, which must have been stored there while the game was not executing.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine these references because Mullen-022 was filed by the same inventor, is directed to the same location-based game system, and is expressly incorporated by reference in Mullen. The combination would improve the game by allowing a user to continue playing from where they left off, effectively utilizing the location history already being saved in Mullen and compensating for any change in the user's location between game sessions. The references focus on different but complementary aspects of the same system.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the references because they describe similar, if not identical, systems implemented on the same hardware configurations, using the same types of sensors. The combination involves applying known software techniques for saving and loading game state to a known AR game architecture.

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

• Prior Art Relied Upon: Mullen (Application # 2006/0105838), Mullen-022 (Application # 2005/0049022), and Annambhotla (representing Annambhotla-PCT (WO 2012/026936) and Annambhotla-US (Application # 2012/0052953)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Mullen and Mullen-022 from Ground 1. Petitioner argued that Annambhotla teaches the additional limitations of claims 4-7, which involve receiving map information for the surrounding geographic area from a remote map database (e.g., Google Maps) and displaying it. Annambhotla explicitly discloses a location-based game that periodically polls a GPS receiver and correlates the location with information from online directories like Google Maps. This map information can include streets, buildings, and points of interest, which are then displayed to the user.
  • Motivation to Combine: A POSA would combine Annambhotla with the Mullen/Mullen-022 system to enhance the game's realism and user experience. Instead of relying on pre-scanned or less-detailed environmental data as suggested in Mullen, using a commercially available map database like Google Maps would provide up-to-date, detailed real-world features (buildings, streets) efficiently. This would also free up the device's computing resources from intensive object-recognition tasks, allowing for better game performance. Furthermore, implementing features suggested by Mullen, such as location-based advertising, would be more effective using the robust database integration taught by Annambhotla.
  • Expectation of Success: A POSA would have had a reasonable expectation of success, as integrating map data from third-party services via APIs was a well-known and common practice for software developers at the time of the invention.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the IPR should not be denied as cumulative to a simultaneously filed petition. This petition relies on Mullen (prior art under 35 U.S.C. §102(b)) as the primary reference, while the other petition relies on a different reference, Baronoff (prior art under §102(e)). Petitioner contended that the references are not redundant, as they disclose certain features with different levels of explicitness, and the different statutory bases for their prior art status make the grounds non-cumulative.

5. Relief Requested

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