Niantic Inc v. Barbaro Technologies LLC

1. Case Identification

• Case #: IPR2019-00668
• Patent #: 7,373,377
• Filed: February 12, 2019
• Petitioner(s): Niantic, Inc.
• Patent Owner(s): Barbaro Technologies, LLC
• Challenged Claims: 1-3, 5-8, 10-13, 15-17, 19, and 24-25

2. Patent Overview

• Title: Interactive Virtual Thematic Environment
• Brief Description: The ’377 patent discloses methods and systems for integrating real-time information into a virtual thematic environment, such as a gaming world or a website. The invention uses a client-server architecture that includes a primary application and at least one secondary application, along with specific software modules for processing and displaying the real-time data.

3. Grounds for Unpatentability

Ground 1: Obviousness over March-097 - Claims 1-3, 5-8, 10-13, 15-17, 19, and 24-25 are obvious over March-097 in view of the general knowledge of a POSITA.

• Prior Art Relied Upon: March-097 (Application # 2005/0043097), which claims priority to March-752 (Provisional Application # 60/496,752).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that March-097, which discloses a "virtual game world," teaches every element of the challenged claims. March-097 describes a client-server system where a primary application (an overarching "Wild West" themed game) provides access to a plurality of secondary applications (sub-games like poker and checkers). This maps directly to the ’377 patent’s primary and secondary application structure.

  • Petitioner asserted that March-097 discloses integrating real-time information by describing a system that ascertains a client's physical location to obtain and project location-specific data—such as time of day, weather, and news headlines—into the game world. For example, the sky in the game changes to reflect the real-world time, and localized news headlines can be displayed to a player.

  • The ’377 patent’s specific software modules are allegedly disclosed by corresponding components in March-097. The "quantum imaging environment (QIE) module" was mapped to March-097's "Real-Time Data Collection Module" and "Game World Context Module," which collectively receive, interpret, and provide real-time content for use across various devices. The "digital logic library" limitation was mapped to March-097’s server and client components that store game content and rules, such as player status, game logic, and environmental data.

  • Dependent claims were also addressed. For instance, providing information to a mobile device (claim 7) was taught by March-097's disclosure of game clients running on smartphones and PDAs. Displaying objects that operate in real-time (claim 11) was taught by March-097's in-game clock showing the real time of day.

  • Motivation to Combine (for §103 grounds): The ground was presented as a single-reference obviousness challenge, supplemented by the knowledge of a person of ordinary skill in the art (POSITA). Petitioner argued that March-097 discloses a complete, functional system. To the extent any minor gaps existed between March-097's disclosure and the claim language (e.g., specifying the "world wide web" instead of the broader "internet"), a POSITA would have found it obvious to use such conventional technologies to implement the system described. The motivation was to use standard, well-known internet protocols and components to realize the integrated, real-time virtual environment taught by March-097.

  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because March-097 described a detailed and coherent system architecture, using well-understood client-server principles and game design concepts, with predictable results.

4. Key Claim Construction Positions

• Petitioner stated that for the purposes of the IPR, it demonstrates that the prior art renders the claims obvious even under the Patent Owner's proposed constructions from related district court litigation, while reserving the right to argue that the terms are indefinite.
• "quantum imaging environment (QIE) module": While arguing the term is indefinite, Petitioner contended that March-097’s system for collecting, interpreting, and distributing real-time data meets the Patent Owner’s proposed construction of "a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices."
• "digital logic library": Similarly, Petitioner argued that March-097’s distributed storage of game content and rules on both the client and server meets the Patent Owner’s proposed construction of "a software layer which contains content and rules for use in the virtual thematic environment."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should not be denied under §325(d) because the primary reference, March-097, was not substantively considered during the original prosecution of the ’377 patent. Although March-097 was listed on a Notice of References Cited filed with the Notice of Allowance, the examiner never discussed it or relied upon it in any rejection, meaning its teachings were not previously evaluated against the claims.
• Petitioner also distinguished the present petition from a simultaneously filed petition, arguing the grounds were not cumulative. This petition relies on a single-reference obviousness theory with March-097, whereas the other petition relies on different prior art (Robarts and Filo) with a different motivation to combine, offering a distinct basis for invalidity.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-8, 10-13, 15-17, 19, and 24-25 of Patent 7,373,377 as unpatentable.