PTAB

IPR2019-00668

Niantic, Inc. v. Barbaro Technologies, LLC

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1. Case Identification

2. Patent Overview

  • Title: Interactive Virtual Thematic Environment
  • Brief Description: The ’377 patent describes a system for integrating real-time information (e.g., sports scores, news) into a "virtual thematic environment" like a game or website. The invention uses a client-server system that includes a primary application and at least one secondary application, and recites specific software components including a graphics user interface (GUI) module, a "quantum imaging environment (QIE) module," and a "digital logic library."

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-8, 10-13, 15-17, 19, and 24-25 are obvious over March-097 in view of the knowledge of a Person of Ordinary Skill in the Art (POSA).

  • Prior Art Relied Upon: March-097 (Application # 2005/0043097), which claims priority to March-752 (U.S. Provisional Application No. 60/496,752).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that March-097, which discloses a system for a "virtual game world," teaches all limitations of the challenged claims. March-097 describes a client-server architecture where a primary application (a "Wild West" themed game world) provides access to a plurality of secondary applications (sub-games like poker and checkers). Petitioner asserted that March-097 explicitly discloses integrating real-time data—such as location, time of day, weather, and news headlines—into this game world to reflect real-world conditions. For example, the sky in the game can change to reflect the actual weather, and news headlines can be displayed to players.
    • Petitioner mapped specific components from March-097 to the claim limitations. The "Game Client Application" and "Game World User Interface" of March-097 were alleged to meet the "GUI module" limitation. The "Real-Time Data Collection Module" and "Game World Context Module"—which collect, store, and make real-time information available to different client devices—were argued to meet the "QIE module" limitation as construed by the Patent Owner. The combination of server-side databases and client-side game logic for managing player states, game rules, and content was argued to constitute the claimed "digital logic library."
    • Dependent claims were also argued to be obvious. March-097 was said to teach use on mobile devices (claim 7), downloading information from the World Wide Web (claim 8), automatic data downloads based on user actions (claim 10), and providing objects that operate in real-time, such as a clock showing the current time (claim 11).
    • Motivation to Combine (for §103 grounds): The argument relied on supplementing the explicit teachings of March-097 with the general knowledge of a POSA. Petitioner argued a POSA would have been motivated to implement the high-level systems of March-097 using conventional and well-known techniques. For example, where March-097 teaches retrieving data from the "public internet network," a POSA would naturally be motivated to use the World Wide Web and standard protocols like HTTP to accomplish this, thus teaching limitations reciting the "world wide web."
    • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success because implementing the claimed features involved applying routine, predictable software design principles to the established concepts disclosed in March-097.

4. Key Claim Construction Positions

  • Petitioner stated it would argue in district court litigation that several key terms are indefinite. However, for the purpose of the inter partes review (IPR), Petitioner demonstrated that the prior art renders the claims obvious even under the Patent Owner's proposed constructions.
  • "Quantum Imaging Environment (QIE) module": The Patent Owner construed this as "a software layer which receives and interprets content so as to be accessible on different types of devices." Petitioner argued March-097's "Real-Time Data Collection Module" and "Game World Context Module" collectively perform this function.
  • "Digital logic library": The Patent Owner construed this as "a software layer which contains content and rules for use in the virtual thematic environment." Petitioner argued that March-097's distributed system of databases, caches, and game-specific modules on both the client and server collectively store the content and rules for the game world, thereby meeting this limitation.
  • "Virtual thematic environment": The Patent Owner construed this as "a theme-based virtual computer interface which may take the form of a game." Petitioner argued that March-097's "virtual game world" with a "Wild West" theme directly maps to this construction.

5. Arguments Regarding Discretionary Denial

  • Not Cumulative of Prosecution History (§325(d)): Petitioner argued that although March-097 was listed on a Notice of References Cited during the original prosecution of the ’377 patent, it was never substantively analyzed by the examiner or used in any rejection. Citing PTAB precedent, Petitioner asserted that the mere listing of a reference does not constitute a substantive review that would make the petition's arguments cumulative.
  • Not Cumulative of Other Petitions (§314(a)): Petitioner disclosed a simultaneously filed IPR petition against the same patent that relied on different prior art: Robarts (Application # 2004/0002843) in view of Filo (Patent 6,215,498). Petitioner argued the grounds were not cumulative because they presented distinct invalidity theories. The present petition relies on a single reference (March-097), whereas the other relies on a combination. Further, the references disclose different features and have different priority dates, with Robarts/Filo predating the patent owner's earliest asserted invention date.

6. Relief Requested

  • Petitioner requested institution of IPR and cancellation of claims 1-3, 5-8, 10-13, 15-17, 19, and 24-25 of the ’377 patent as unpatentable.