Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: December 6, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIANTIC, INC.,
`Petitioner,
`
`v.
`
`NANT HOLDINGS IP, LLC,
`Patent Owner.
`____________
`
`IPR2021-01133
`Patent 10,403,051 B2
`____________
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: December 6, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIANTIC, INC.,
`Petitioner,
`
`v.
`
`NANT HOLDINGS IP, LLC,
`Patent Owner.
`____________
`
`IPR2021-01133
`Patent 10,403,051 B2
`____________
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2021-01133
`Patent 10,403,051 B2
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`
`I. INTRODUCTION
`
`A. Case Posture
`Niantic, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43
`(“Challenged Claims”) of U.S. Patent No. 10,403,051 B2 (Ex. 1001, “the
`’051 patent”). Petitioner identifies itself as a real party in interest. Pet. 1.
`Nant Holdings IP, LLC (“Patent Owner”) identifies itself as a real party in
`interest (Paper 4, 1), and timely filed a Preliminary Response to the Petition
`(Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not
`institute an inter partes review “unless . . . there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`Applying those standards, and upon consideration of the information
`presented in the Petition and Preliminary Response, we determine that
`Petitioner has not demonstrated a reasonable likelihood of prevailing with
`respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38,
`and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a).
`Accordingly, constrained by the record before us, we deny institution of an
`inter partes review of the ’051 patent.
`
`B. Related Matters
`The parties indicate that the ’051 patent is involved in one U.S.
`district court action, namely, NantWorks, LLC, and Nant Holdings IP, LLC
`v. Niantic, Inc., No. 3:20-cv-06262-LB (N.D. Cal.). Pet. 1; Paper 4, 1.
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`Patent Owner also indicates that pending U.S. Patent Application
`No. 16/926,485, filed July 10, 2020, relates to the ’051 patent, but “does not
`concede that the identified matter[] would affect, or be affected by, a
`decision in the present post grant review of [the ’051 patent].” Paper 4, 1.
`
`C. The ’051 Patent
`The ’051 patent is titled “Interference Based Augmented Reality
`Hosting Platforms,” and issued on September 3, 2019, from U.S. Patent
`Application No. 16/186,405, filed November 9, 2018. Ex. 1001, codes (10),
`(21), (22), (45), (54). The ’051 patent claims priority through several related
`applications to U.S. Provisional Patent Application No. 61/473,324, filed
`April 8, 2011. Id. at code (60).
`The ’051 patent generally relates to “augmented reality [AR]
`technologies,” where “[a]ugmented reality represents a presentation of
`virtual objects along side [sic] real-world elements.” Ex. 1001, 1:27–33.
`According to the ’051 patent, interference-based augmented reality hosting
`platforms “include networking nodes capable of analyzing a digital
`representation of [a] scene to derive interference among elements of the
`scene.” Id., Abstract. Such hosting platforms “utilize[] the interference to
`adjust the presence of augmented reality objects within an augmented reality
`experience.” Id. “Elements of a scene can constructively interfere,
`enhancing presence of augmented reality objects; or destructively interfere,
`suppressing presence of augmented reality objects.” Id.
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`Figure 4 of the ’051 patent is reproduced below.
`
`
`
`Ex. 1001, 4:40–41, Fig. 4. Figure 4 above depicts how a “satisfaction level,”
`which indicates to what degree each of relevant AR objects has a presence in
`an augmented reality, “can effect presentation or interaction on AR-capable
`devices represented by mobile devices 410A and 410B.” Id., 16:49–51,
`17:50–53. Mobile devices 410A and 410B both capture a digital
`representation of a scene having real world elements 490. Id., 17:53–55.
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`In this example of Figure 4, an AR hosting platform recognizes real world
`elements 490 and identifies a set of relevant AR objects from available AR
`objects considered germane to a context associated with real world
`elements 490, with relevant AR objects 446A and 446B being considered
`member objects of the set of relevant AR objects. Id., 17:55–60.
`The ’051 patent further explains Figure 4:
`In the case of mobile device 410A, relevant AR object 446A has
`an enhanced presence due to constructive interference among
`elements 490. Thus, relevant AR object 446A is strongly
`influenced by the constructive interference among elements 490
`and likely has a strong satisfaction level with respect to
`interference criteria. In the example of mobile device 410B,
`which captures a similar digital representation of the scene
`having elements 490, the context dictates that relevant AR object
`446B has a suppressed presence due to destructive interference
`among elements 490. Thus, relevant AR object 446B is weakly,
`or negatively, influenced by elements 490 and likely has a weak
`or negative satisfaction level with respect to the interference
`criteria.
`Id., 17:63–18:9.
`According to the ’051 patent, “[e]nhanced presence and suppressed
`presence can take many different forms depending on the nature of relevant
`AR objects 446A and 446B, the context, or other factors relating to the
`scene.” Ex. 1001, 18:18–24.
`
`D. Illustrative Claim
`The ’051 patent includes forty-four claims, of which claims 1, 5–11,
`15, 18, 22–29, 34–36, 38, and 43 are challenged. Claims 1 and 43 are the
`challenged independent claims. Claim 1 is illustrative and reproduced
`below.
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`An augmented reality (AR) platform system comprising:
`1.
`an AR object repository storing available AR objects in a first
`non-transitory computer readable memory; and
`an AR server coupled with the AR object repository and, upon
`execution of software instructions stored in a second non-
`transitory computer readable memory by a processor, is
`configured to:
`obtain digital data representative of an environment of an AR
`capable mobile device, the digital data including a device
`location of the AR capable device and a virtual element
`attribute;
`determine at least one context related to the AR capable
`device and pertinent to the environment based at least on
`the device location;
`identify relevant AR objects from the AR repository
`representing available AR objects corresponding to the at
`least one context;
`determine whether to alter presence of a relevant AR object
`based on at least the device location and the virtual
`element attribute; and
`cause the AR capable device to render the relevant AR object
`according to its altered presence.
`Ex. 1001, 21:47–22:2.
`E. Applied References
`Petitioner relies upon the following references:
`Yu et al., U.S. Patent Application Publication
`No. 2010/0066750 A1 (Ex. 1003, “Yu”), filed September 16,
`2008, published March 18, 2010.
`Sanz-Pastor et al., U.S. Patent Application Publication
`No. 2007/0242131 A1 (Ex. 1004, “Sanz-Pastor”), filed
`December 29, 2006, published October 18, 2007.
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`Mullen, U.S. Patent Application Publication
`No. 2006/0105838 A1 (Ex. 1005, “Mullen”), filed November
`16, 2005, published May 18, 2006.
`Pet. 4.
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 5–11, 15, 18, 22–
`29, 34–36, 38, and 43 of the ’051 patent based on the following grounds.
`Claims Challenged
`35 U.S.C. § Reference(s)/Basis
`1, 5–9, 18, 22, 23, 27–29, 34, 36, 38,
`103(a)1
`Yu
`43
`1, 5–11, 15, 18, 22, 23, 27–29, 34,
`36, 38, 43
`Yu, Sanz-Pastor,
`1, 5–11, 15, 18, 22–29, 34–36, 38,
`Mullen
`43
`Pet. 4. Petitioner relies upon the Declaration of Dr. Michael Zyda
`(Ex. 1002).
`
`103(a)
`
`Yu, Sanz-Pastor
`
`103(a)
`
`II. ANALYSIS
`
`A. Applicable Law
`Petitioner challenges the patentability of claims 1, 5–11, 15, 18, 22–
`29, 34–36, 38, and 43 of the ’051 patent on grounds that the claims would
`have been obvious under 35 U.S.C. § 103 in light of various references
`including: Yu, Sanz-Pastor, and Mullen. “In an [inter partes review], the
`petitioner has the burden from the onset to show with particularity why the
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’051 patent was filed before March 16, 2013, the effective date of the
`relevant amendment, the pre-AIA version of § 103 applies.
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`patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”))
`(emphasis added). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`review).
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when of record, objective evidence of
`obviousness or non-obviousness, i.e., secondary considerations. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). Secondary considerations may
`include the following: “commercial success, long felt but unsolved needs,
`failure of others, etc.”2 Id. The totality of the evidence submitted may show
`that the challenged claims would not have been obvious to one of ordinary
`
`
`2 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).
`When evaluating a combination of teachings, we must also “determine
`whether there was an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art, at the time
`of the effective filing date of the ’051 patent:
`would have possessed at least a Master of Science in the areas of
`electrical engineering or computer science (or equivalent
`degree), with some working knowledge of augmented reality,
`mobile gaming, and
`the associated
`technologies; or,
`alternatively, a Bachelor of Science in computer science (or
`equivalent degree) with at least two years of experience in the
`aforementioned areas.
`Pet. 6 (citing Ex. 1002 ¶¶ 12–16). Patent Owner does not present an
`alternative definition at this stage of the proceeding. Prelim. Resp. 8 (“For
`the purposes of this preliminary response to this Petition only, Patent Owner
`accepts this proposed level of skill in the art.”).
`We regard Petitioner’s proposed definition as reasonable, and
`consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and
`Interferences did not err in concluding that the level of ordinary skill in the
`art was best determined by the references of record). Accordingly, we apply
`the level of skill set forth above, which also is consistent with the testimony
`of Dr. Zyda (Ex. 1002 ¶¶ 12–16).
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`C. Claim Construction
`The parties disagree on the approach to claim construction in this
`proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute
`the construction of several claim terms,” and submits that it identifies such
`disputes in the Petition “so that the Board can be aware of them.” Pet. 10–
`11. Petitioner also “respectfully submits that [such disputes] need not be
`expressly resolved by the Board for purposes of evaluating Petitioner’s
`proposed Grounds” because “the prior art would satisfy the constructions
`proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R.
`§ 42.104(b)(3), Petitioner does not provide and support an express
`construction in the Petition for any limitation at issue in this proceeding.
`On the other hand, Patent Owner submits the limitation “alter[ed] presence”
`should be construed to mean “the degree of at least a relevant AR object’s
`visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner
`otherwise submits, “[f]or all other terms, the plain and ordinary meaning of
`those terms is sufficient for the Board to analyze Petitioner’s grounds at this
`preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to
`provide required claim constructions or support therefor in violation of
`37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board
`and Patent Owner to guess at how the Petition has construed the claims in
`and what support allegedly exists for such constructions”).
`Regardless, as discussed below, we do not find that the express
`construction of any term is necessary for this decision. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan
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`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying
`Vivid Techs. in the context of an inter partes review).
`
`D. Obviousness of Claims 1, 5–9, 18, 22, 23, 27–29, 34, 36, 38,
`and 43 over Yu (Ground 1)
`Petitioner contends claims 1, 5–9, 18, 22, 23, 27–29, 34, 36, 38,
`and 43 are unpatentable under 35 U.S.C. § 103 as obvious over Yu
`(Ex. 1003). Pet. 18–57. Patent Owner opposes Petitioner’s contentions.
`Prelim. Resp. 18–44. Based on our review of the Petition and Preliminary
`Response, we determine that Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing that any of claims 1, 5–9, 18, 22,
`23, 27–29, 34, 36, 38, and 43 is unpatentable as obvious over Yu, as
`discussed below. We begin with an overview of Yu.
`
`1. Overview of Yu
`Yu relates generally “to messaging within a mobile virtual and
`augmented reality system.” Ex. 1003 ¶ 2. Yu discloses:
`During operation a user can create “virtual graffiti” that
`will be left for a particular device to view as part of an
`augmented-reality scene. The virtual graffiti will be assigned to
`either a particular physical location or a part of an object that can
`be mobile. The virtual graffiti is then uploaded to a network
`server, along with the location and individuals who are able to
`view the graffiti as part of an augmented-reality scene.
`When a device that is allowed to view the graffiti is near
`the location, the graffiti will be downloaded to the device and
`displayed as part of an augmented-reality scene. To further
`enhance the user experience, the virtual graffiti can be dynamic,
`changing based on an ambient light source. For example, in an
`outdoor environment, the context available to the mobile device
`(time, location, and orientation) can be acquired in order to
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`determine the source and intensity of natural light and apply it to
`appropriate surfaces of the virtual objects.
`Id. ¶¶ 14–15.
`Figure 3 of Yu is reproduced below.
`
`
`
`Figure 3 illustrates an augmented-reality scene.
`Ex. 1003 ¶ 7, Fig. 3. As shown in Figure 3 above, a first user creates virtual
`graffiti 301, which comprises at least two parts: a first virtual object (scroll)
`along with virtual text (“try the chili”). Id. ¶ 27. Virtual graffiti 301 is
`attached to door 302 and left for a second user to view. Id. Virtual
`graffiti 301 is displayed with shadow 303 that changes with the time of day.
`Id. For example, door 302 viewed at a first time of day will have
`shadow 303 displayed to the lower right of graffiti 301, and viewed at a
`second time of day will have shadow 303 displayed to the lower left of
`graffiti 301. Id. According to Yu, “virtual graffiti 301 may change any
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`combination of shadow, brightness, contrast, color, specular highlights, or
`texture maps in response to the ambient light.” Id. ¶ 28.
`
`2. Independent Claims 1 and 43: “virtual element attribute”
`Independent claims 1 and 43 each require, in relevant part, obtaining
`digital data representative of an environment of an AR capable mobile
`device, where the digital data includes a “virtual element attribute,” and
`determining whether to make present or alter presence of a relevant AR
`object based on the “virtual element attribute.” Ex. 1001, 21:47–22:2, 24:5–
`22. The parties dispute, inter alia, whether Petitioner’s cited evidence
`adequately supports Petitioner’s contention that Yu teaches this “virtual
`element attribute.” See, e.g., Prelim. Resp. 20–25; Pet. 29–30.
`Petitioner contends Yu teaches that the requisite digital data includes a
`“virtual element attribute.” Pet. 29. Petitioner argues:
`While the ’051 Patent does not expressly define [“virtual element
`attribute”],
`it describes “[e]lement attributes, AR object
`attributes, or other attributes” as “includ[ing] myriad types of
`attributes” such as “location information (e.g., relative location
`to elements 390 of a scene, triangulation, GPS coordinates,
`etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that
`the AR platform system obtains digital data including ambient-
`light information in a three-step process at steps 901-903. (Yu,
`¶¶0060-0062.) A POSA would have understood that this
`ambient light information is a “virtual element attribute” as
`described in the ’051 Patent, because the indoor/outdoor data,
`position data for the sun, and local weather data all relate to the
`location of the mobile device on which the virtual element will
`be placed. (Zyda, ¶¶140-141.)
`Pet. 29–30. Petitioner’s declarant makes these same statements. See
`Ex. 1002 ¶¶ 140–141.
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`Patent Owner argues Petitioner does not explain sufficiently, let alone
`with particularity, how or why a real-world attribute, namely, Yu’s ambient
`light information, allegedly teaches a virtual element attribute as recited in
`claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data
`concerning real-world ‘ambient-light information’ as corresponding to the
`claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element
`attributes would play any role in an image’s rendering.”; “[Petitioner]
`assumes that real-world ambient light corresponds to the virtual element
`attribute used to ‘determine whether to alter presence of a relevant AR
`object.’”). Patent Owner argues “at no point does the Petition construe the
`term ‘virtual element attribute’ or explain how the real-world attributes of
`ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent
`specification repeatedly distinguish[ing] real-world elements and virtual
`elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled
`artisan] would conclude that virtual elements are different from real-world
`elements and that virtual element attributes are the information about the
`virtual elements, not real-world elements.”).
`Patent Owner also argues Petitioner bases its premise that real-world
`“location” of a mobile device may be a “virtual element attribute” on a
`“misleading[] combin[ation]” of two partial statements in the ’051 patent.
`Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19).
`Patent Owner argues, “[i]n context, these two sentences do not define
`‘virtual element attribute’ to mean location information as the Petition
`argues,” and “would [not] lead [the skilled artisan] to conclude that real-
`world ambient light is a virtual element attribute merely because it ‘relate[s]
`to the location of the mobile device.’” Id. at 23. As noted by Patent Owner
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`(Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent
`explicitly discloses that “the location information can pertain to or reflect the
`physical location of real-world elements.” Ex. 1001, 16:15–16. Patent
`Owner concludes, and we agree for the reasons discussed above, Petitioner
`“simply has not shown that it is proper to rely on the real-world quality of
`ambient light to fulfill the requirement for a ‘virtual element attribute’ in
`claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither
`Petitioner nor its declarant expressly construes, with citation to supporting
`evidence, the limitation “virtual element attribute” to include real-world
`attributes, or provides evidentiary support and explanation of sufficient
`particularity for how or why obtaining a real-world attribute like ambient
`light information teaches obtaining a virtual element attribute. See
`35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4).
`For the foregoing reasons, and constrained by the Petition, we are not
`persuaded that the cited evidence adequately supports Petitioner’s contention
`that Yu discloses the “virtual element attribute” limitation, as recited in
`independent claims 1 and 43.
`
`3. Summary
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of success in establishing the
`unpatentability of any of independent claims 1 and 43, and claims 5–9, 18,
`22, 23, 27–29, 34, 36, and 38, which depend therefrom, as obvious over Yu.
`
`E. Obviousness of Claims 1, 5–11, 15, 18, 22, 23, 27–29, 34, 36, 38,
`and 43 over the Combination of Yu and Sanz-Pastor (Ground 2)
`Petitioner contends claims 1, 5–11, 15, 18, 22, 23, 27–29, 34, 36, 38,
`and 43 are unpatentable under 35 U.S.C. § 103 as obvious over the
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`combination of Yu (Ex. 1003) and Sanz-Pastor (Ex. 1004). Pet. 57–67.
`Patent Owner opposes Petitioner’s contentions. Prelim. Resp. 18–44. Based
`on our review of the Petition and Preliminary Response, we determine that
`Petitioner has not demonstrated a reasonable likelihood that it would prevail
`in showing that any of claims 1, 5–11, 15, 18, 22, 23, 27–29, 34, 36, 38,
`and 43 is unpatentable as obvious over the combination of Yu and Sanz-
`Pastor, as discussed below. We begin with an overview of Sanz-Pastor.
`
`1. Overview of Sanz-Pastor
`Sanz-Pastor generally relates to a location-based wireless
`collaborative environment with a visual user interface. Ex. 1004, code (54).
`Sanz-Pastor discloses:
`A wireless networked device incorporating a display, a video
`camera and a geo-location system receives geo-located data
`messages from a server system. Messages can be viewed by
`panning the device, revealing the message’s real world location
`as icons and text overlaid on top of the camera input on the
`display. The user can reply to the message from her location,
`add data to an existing message at its original location, send new
`messages to other users of the system or place a message at a
`location for other users. World Wide Web geo-located data can
`be explored using the system’s user interface as a browser. The
`server system uses the physical location of the receiving device
`to limit messages and data sent to each device according to range
`and filtering criteria, and can determine line of sight between the
`device and each actual message to simulate occlusion effects.
`Id., Abstract.
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`Figure 4 of Sanz-Pastor is reproduced below.
`
`
`
`Figure 4 illustrates an emergency response application.
`Ex. 1004 ¶ 20, Fig. 4. As shown in Figure 4 above, real-time video
`display 406 of a wireless networked device shows a flooded area, with two
`messages 402, 404 overlaid on the image 406. Id. ¶ 44. One message 402
`indicates that it is from joe@rescue1, sent at 15:40:03, and having text “Gas
`Leak” at a distance of 0.1 miles; the other message 404 indicates that it is
`from mark@rescue1, sent at 12:30:00, reads “Structural Damage” and is
`located at a distance of 0.5 miles. Id.
`Sanz-Pastor discloses that, for each message in a range-sorted list
`(like messages 402, 404), a server determines a line-of-sight query from the
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`device’s position to the message coordinates, using geometric database 206
`of terrain elevation and three-dimensional models of structures and
`vegetation specific to that location, and then updates an occlusion attribute
`for the message that is specific to each device’s settings. Ex. 1004 ¶ 37.
`This can be used to occlude or modify the appearance of the message when
`displayed. Id. ¶ 51. The wireless networked device can also “determine
`occlusion information for each message, and not present occluded messages
`or present them in an attenuated fashion by making them transparent when
`drawn or using a different color coding.” Id. ¶ 29.
`
`2. Independent Claims 1 and 43: “virtual element attribute”
`Petitioner contends Sanz-Pastor discloses obtaining digital data
`including a “virtual element attribute” to facilitate rendering occlusions.
`Pet. 60. Petitioner argues “Sanz-Pastor teaches that the server determines a
`‘line of sight’ between the device and a virtual object in order ‘to simulate
`occlusion effects.’” Pet. 60. Petitioner argues that “[t]his determination
`includes obtaining data relating to ‘terrain elevation’ and ‘three-dimensional
`models of structures and vegetation specific to that location.’” Id. Petitioner
`concludes the skilled artisan “would have understood that the data obtained
`in order to determine the line of sight is a ‘virtual element attribute.’” Id.
`(citing Ex. 1002 ¶ 304).
`Patent Owner responds: “But lines of sight, terrain elevation, and
`models of structures and vegetation specific to the area all relate to the real-
`world, making them all real-world element attributes and not virtual element
`attributes.” Prelim. Resp. 24. We agree. Patent Owner also argues
`Petitioner “still never explains why real-world qualities (like terrain
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`elevation and line of sight range) are virtual element attributes other than its
`flawed logic that they relate to location.” Id. at 24–25. We again agree.
`As stated above, neither Petitioner nor its declarant expressly
`construes, with citation to supporting evidence, the limitation “virtual
`element attribute” to include real-world attributes such as terrain elevation.
`Also, neither Petitioner nor its declarant provides evidentiary support and
`explanation of sufficient particularity for how or why obtaining a real-world
`attribute like terrain elevation teaches obtaining a virtual element attribute.
`See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4).
`For the foregoing reasons, and constrained by the Petition, we are not
`persuaded that the cited evidence adequately supports Petitioner’s contention
`that the combination of Yu and Sanz-Pastor discloses the “virtual element
`attribute” limitation, as recited in independent claims 1 and 43.
`
`3. Summary
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of success in establishing the
`unpatentability of any of independent claims 1 and 43, and claims 5–11, 15,
`18, 22, 23, 27–29, 34, 36, and 38, which depend therefrom, as obvious over
`the combination of Yu and Sanz-Pastor.
`
`F. Obviousness of Claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43
`over the Combination of Yu, Sanz-Pastor, and Mullen (Ground 3)
`Petitioner contends claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43
`are unpatentable under 35 U.S.C. § 103 as obvious over the combination of
`Yu (Ex. 1003), Sanz-Pastor (Ex. 1004), and Mullen (Ex. 1005). Pet. 67–76.
`Patent Owner opposes Petitioner’s contentions. Prelim. Resp. 18–44.
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`Petitioner does not argue Mullen teaches obtaining a “virtual element
`attribute” or otherwise cures any deficiencies in Yu (Ground 1) or the
`combination of Yu and Sanz-Pastor (Ground 2) as applied to independent
`claims 1 and 43. Petitioner submits “Ground 3 adds Mullen (Ex. 1005) with
`respect to dependent claims 8, 24-26, and 35.” Pet. 67. Therefore, for the
`same reasons discussed above in Sections II.D and II.E, we determine that
`Petitioner has not demonstrated a reasonable likelihood that it would prevail
`in showing that any of claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 is
`unpatentable as obvious over the combination of Yu, Sanz-Pastor, and
`Mullen.
`
`III. CONCLUSION
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`with respect to any of claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of
`the ’051 patent under any of proffered Grounds 1 through 3.
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is not instituted for claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43
`of U.S. Patent No. 10,403,051 B2.
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`For PETITIONER:
`Heidi L. Keefe
`Lauren J. Krickl
`COOLEY LLP
`hkeefe@cooley.com
`lkrickl@cooley.com
`
`
`For PATENT OWNER:
`Matthew K. Blackburn
`Evan Boetticher
`DIAMOND MCCARTHY LLP
`mblackburn@diamondmccarthy.com
`Evan.boetticher@diamondmccarthy.com
`
`
`
`21
`
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