Meta Platforms Inc v. Eight KHZ LLC

1. Case Identification

• Case #: IPR2023-01023
• Patent #: 10,798,509
• Filed: June 9, 2023
• Petitioner(s): Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC
• Patent Owner(s): Eight KHZ LLC
• Challenged Claims: 1-14, 17-20

2. Patent Overview

• Title: Wearable Electronic Device Displays a 3D Zone From Where Binaural Sound Emanates
• Brief Description: The ’509 patent discloses systems and methods for generating three-dimensional (3D) binaural sound in virtual and augmented reality environments. The technology involves using a handheld portable electronic device (PED) to define a zone around a user who is wearing a wearable electronic device (WED), controlling sound localization points (SLPs) within that zone, and displaying a virtual image of the zone when a user leaves it.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 and 17-20 are obvious over Pedrotti, Jang, and Begault.

• Prior Art Relied Upon: Pedrotti (Patent 9,851,786), Jang (Patent 8,520,872), and Begault (NASA/TM-2000-209606).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pedrotti disclosed a virtual reality (VR) system with a head-mounted display (HMD), which qualifies as a WED, and a tracked handheld controller (PED). This system allows a user to define a "safe area" or zone and displays a "virtual fence" as a visual warning when the user approaches the boundary. This combination was asserted to teach the limitations of dividing an area into a zone using a PED and determining when a user is inside that zone with a WED. The petition contended that Jang and Begault supply the missing audio elements. Jang taught VR systems that process 3D sound within defined "sound areas," while Begault detailed methods for producing and controlling user-interactive "binaural audio" using Head-Related Transfer Functions (HRTFs). The combination allegedly rendered it obvious to populate Pedrotti's zone with multiple controllable SLPs generating binaural sound. Pointing at and highlighting virtual objects (and thus SLPs) were argued to be fundamental and well-known interactions in VR.
  • Motivation to Combine: The petition asserted that a person of ordinary skill in the art (POSITA) reading Pedrotti, which mentions using "sight and sound" for VR but lacks specifics on audio processing, would be motivated to enhance its immersive capabilities. A POSITA would combine Pedrotti's system with the advanced, realistic 3D spatial audio taught by Jang and Begault to create a more compelling and immersive user experience.
  • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success, as the combination involved applying known audio processing techniques to a known VR hardware configuration (HMD with tracked controllers) to achieve the predictable result of enhanced immersion.

Ground 2: Claims 1-14 and 17-20 are obvious over McCulloch, Pedrotti, and Flaks.

• Prior Art Relied Upon: McCulloch (Patent 9,041,622), Pedrotti (Patent 9,851,786), and Flaks (Patent 8,767,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that McCulloch disclosed an augmented reality (AR) system with an HMD and handheld controllers that already included a 3D audio engine for generating binaural sound associated with virtual objects at specific 3D positions (SLPs). McCulloch explicitly incorporated the teachings of Flaks, which provides further detail on using HRTFs to generate this 3D audio. While McCulloch taught identifying boundaries for a "playspace," the petition argued for combining it with Pedrotti's more robust and advantageous method for defining and enforcing a "safe area" boundary with visual warnings. The combination of McCulloch's audio-enabled virtual objects within a zone defined and managed by Pedrotti's methods was alleged to meet the key limitations of the challenged claims.
  • Motivation to Combine: A POSITA would be motivated to improve the safety and usability of McCulloch's immersive AR system. By incorporating Pedrotti's well-developed "safe area" and "virtual fence" system, a developer could protect users from colliding with real-world obstacles—a known hazard in AR/VR—without disrupting the immersive experience.
  • Expectation of Success: The petition argued that combining these systems would have been obvious to try with a high expectation of success. The integration involved known elements (AR displays with spatial audio, VR boundary management systems) to solve a known problem (user safety), representing a predictable improvement rather than an inventive step.

4. Arguments Regarding Discretionary Denial

• The petition argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) or §325(d). The asserted prior art references were not cited or relied upon during the original prosecution of the ’509 patent. Furthermore, regarding the Fintiv factors, the petition noted that the parallel district court case is at a very early stage, with a motion to transfer currently pending, which weighs against denial.

5. Relief Requested

• Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-14 and 17-20 of Patent 10,798,509 as unpatentable.