Paper 9
`Trials@uspto.gov
`Date: January 9, 2024
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`META PLATFORMS, INC.,
`META PLATFORMS TECHNOLOGIES, LLC, and
`TWISTED PIXEL GAMES, LLC,
`Petitioner,
`
`v.
`
`EIGHT KHZ, LLC,
`Patent Owner.
`____________________________
`
`IPR2023-01021
`Patent 10,917,737 B2
`____________________________
`
`
`
`Before JUSTIN T. ARBES, LYNNE H. BROWNE, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Trials@uspto.gov
`Date: January 9, 2024
`Tel: 571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`META PLATFORMS, INC.,
`META PLATFORMS TECHNOLOGIES, LLC, and
`TWISTED PIXEL GAMES, LLC,
`Petitioner,
`
`v.
`
`EIGHT KHZ, LLC,
`Patent Owner.
`____________________________
`
`IPR2023-01021
`Patent 10,917,737 B2
`____________________________
`
`
`
`Before JUSTIN T. ARBES, LYNNE H. BROWNE, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2023-01021
`Patent 10,917,737 B2
`
`INTRODUCTION
`
`Meta Platforms, Inc., Meta Platforms Technologies, LLC, and
`Twisted Pixel Games, LLC (“Petitioner”) filed a Petition (Paper 2 (“Pet.”)),
`seeking inter partes review of claims 1–20 (the “challenged claims”) of U.S.
`Patent No. 10,917,737 B2 (Ex. 1001 (“the ’737 patent”)). See Pet. 1. Eight
`KHZ, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). With our prior authorization (Ex. 1144), Petitioner filed a
`Preliminary Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a
`Preliminary Sur-Reply (Paper 8, “Prelim. Sur-reply”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`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);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response we conclude that the information presented shows that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of at least one challenged claim of the ’737 patent.
`
`Related Matters
`
`The parties indicate that the ’737 patent is involved in Eight kHz, LLC
`v. Meta Platforms, Inc.; Meta Platforms Technologies, LLC; Twisted Pixel
`Games, LLC, 6:22-cv-00575-ADA (W.D. Tex. 2022) (“the related District
`Court litigation”). Pet. 71; Paper 4.
`The parties identify U.S. Application Nos. 17/988,808 and 17/169,481
`as applications related to the ’737 patent. Pet. 71; Paper 4. Petitioner
`additionally identifies U.S. Application Nos. 62/348,164, 15/365,880,
`
`2
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`IPR2023-01021
`Patent 10,917,737 B2
`15/429,131, and 15/635,166 as applications related to the ’737 patent.
`Pet. 71.
`Patent Owner identifies U.S. Patent Nos. 9,800,990, 9,699,583, and
`9,749,766 as patents related to the ’737 patent. Paper 4.
`Additionally, the following proceedings before the Board involve the
`same parties as the instant proceeding: IPR2023-01003 (U.S. Patent
`No. 9,226,090 B1), IPR2023-01004 (U.S. Patent No. 9,282,196 B1),
`IPR2023-01005 (U.S. Patent No. 9,674,628 B1), IPR2023-01019 (U.S.
`Patent No. 10,368,179 B1), IPR2023-01020 (U.S. Patent
`No. 10,448,184 B1), IPR2023-01022 (U.S. Patent No. 11,172,316 B2),
`IPR2023-01023 (U.S. Patent No. 10,798,509 B1), and IPR2023-01024 (U.S.
`Patent No. 11,290,836 B2).
`
`The ’737 Patent (Ex. 1001)
`
`The ’737 patent, for “Defining a Zone with a HPED and Providing
`Binaural Sound in the Zone,” relates to three-dimensional (“3D”) sound
`localization. Ex. 1001, code (54), 1:7–18. The ’737 patent discloses a
`handheld portable electronic device (“HPED”) that “defines a zone that
`extends from a floor and around a user wearing a wearable electronic device
`([“]WED[”]) and “designates a location in the zone for where binaural sound
`originates to the user.” Id., code (57). The ’737 patent further discloses that
`“[s]ounds are assigned to different zones or different sound localization
`points ([“]SLPs[”]) and are convolved so the sounds localize as binaural
`sound into the assigned zone or to the assigned SLP.” Id. at 1:23–26. To
`process or convolve the sounds, the ’737 patent uses sound localization
`information (“SLI”) that may include, for example, head related transfer
`functions (“HRTFs”). Id. at 5:38–40, 6:21–40.
`
`3
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`IPR2023-01021
`Patent 10,917,737 B2
`Challenged Claims
`
`Petitioner challenges claims 1–20 of the ’737 patent. Pet. 4–70. Of
`the challenged claims, claims 1, 8, and 14 are independent. Independent
`claim 1 is reproduced below with Petitioner’s labeling of the limitations for
`ease of reference.
`1.
`1[pre] A method executed by one or more electronic
`devices, the method comprising:
`1[a] tracking, with a wearable electronic device (WED)
`worn on a head of a user, movement of a handheld portable
`electronic device (HPED) held in a hand of the user such that
`the movement of the HPED defines a size and a shape of a
`three-dimensional (3D) zone that extends from a physical floor
`and around the user;
`1[b] designating, with the HPED held in the hand of the
`user, a sound localization point (SLP) in empty space in the
`zone above the physical floor from where binaural sound
`originates to the user;
`1[c] tracking, with the WED worn on the head of the
`user, the HPED held in the hand of the user such that the HPED
`provides a location to the WED of the SLP in empty space in
`the zone above the physical floor from where the binaural
`sound originates to the user;
`1[d] processing, by a processor, sound with head-related
`transfer functions (HRTFs) to generate the binaural sound that
`externally localizes to the user at the location of the SLP in
`empty space in the zone above the physical floor; and
`1[e] displaying, with the WED worn on the head of the
`user, a virtual image at the location of the SLP in empty space
`in the zone above the physical floor from where the binaural
`sound originates to the user.
`Ex. 1001, 66:7–32.
`
`4
`
`
`
`IPR2023-01021
`Patent 10,917,737 B2
`The Alleged Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 2):1
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–20
`103
`Pedrotti,2 Jang,3 Begault4
`1–20
`103
`McCulloch,5 Pedrotti, Flaks6
`
`Evidence
`
`In support of its proposed grounds, Petitioner relies on the Declaration
`of Gregory F. Welch, Ph.D. (“Dr. Welch”). In support of its Preliminary
`Response, Patent Owner relies on the Declaration of John C. Hart, Ph.D.
`(“Dr. Hart”). In our analysis below, we consider Dr. Welch’s and Dr. Hart’s
`testimony.
`
` ANALYSIS
` Discretion under 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise discretion under § 314(a)
`to deny institution in light of the related District Court litigation. Prelim.
`Resp. 34–43.
`We consider the following factors when determining whether to deny
`institution under § 314(a) based on a parallel district court proceeding:
`
`1 Petitioner supports its challenge with the Declaration of
`Dr. Gregory F. Welch. Ex. 1003.
`2 U.S. Patent No. 9,851,786 B2, filed July 7, 2015, issued
`December 26, 2017 (Ex. 1005, “Pedrotti”).
`3 U.S. Patent No. 8,520,872 B2, issued August 27, 2013 (Ex. 1006, “Jang”).
`4 DURAND R. BEGAULT, NAT’L AERONAUTICS AND SPACE ADMIN., 3D SOUND
`FOR VIRTUAL REALITY AND MULTIMEDIA (2000) (Ex. 1007, “Begault”).
`5 U.S. Patent No. 9,041,622 B2, issued May 26, 2015 (Ex. 1008,
`“McCulloch”).
`6 U.S. Patent No. 8,767,968 B2, issued July 1, 2014 (Ex. 1009, “Flaks”).
`
`5
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`IPR2023-01021
`Patent 10,917,737 B2
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board's projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board's exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). We also consider “several clarifications”
`made by the Director of the United States Patent and Trademark Office
`(“USPTO”). See USPTO Memorandum, Interim Procedure for
`Discretionary Denials in AIA Post Grant Proceedings with Parallel District
`Court Litigation, 2 (June 21, 2022) (“Director’s Memo”).7
`The Director’s Memo provides that “[c]onsistent with Sotera
`Wireless, Inc.,[8] the PTAB will not discretionarily deny institution in view
`of parallel district court litigation where a petitioner presents a stipulation
`not to pursue in a parallel proceeding the same grounds or any grounds that
`could have reasonably been raised before the PTAB.” Director’s Memo 3.
`With our authorization, Petitioner has filed a stipulation which stipulates that
`
`
`7 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_
`litigation_memo_20220621_.pdf.
`8 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19
`(PTAB Dec. 1, 2020) (precedential).
`
`6
`
`
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`IPR2023-01021
`Patent 10,917,737 B2
`If the PTAB institutes the pending IPR in IPR2023-01021
`challenging the patentability of claims 1-20 of the ’737 patent,
`then [Defendants Meta Platforms, Inc., Meta Platforms
`Technologies, LLC, and Twisted Pixel Games, LLC] will not
`pursue as to the challenged claims any ground raised or that
`could have been reasonably raised in the IPR in the above-
`captioned district court litigation (No. 6:22-cv-00575-ADA).
`Ex. 1141, 3.
`Patent Owner concedes that Petitioner has filed a “Sotera-like
`stipulation” but argues that it is insufficient because it “leaves the door open
`to a duplication of efforts and the possibility of conflicting decisions.”
`Prelim. Sur-reply 1–2 (citing Ex. 1141, 4 (“This stipulation is not intended
`. . . to limit Meta’s ability to assert . . . invalidity under 35 U.S.C. §§ 102 and
`103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless
`of whether IPRs are instituted.” (emphasis omitted))). Namely, Patent
`Owner argues that Petitioner’s stipulation carves out the “right to assert
`overlapping system art in the [parallel] district court [proceeding],” such that
`institution here would not address the risk of “inconsistent outcomes
`between the PTAB and the district court.” Id. at 4–5.
`We disagree with Patent Owner, as Petitioner’s stipulation sufficiently
`comports with the language of the Director’s Memo, consistent with Sotera
`Wireless, Inc. See Director’s Memo 3. Patent Owner’s argument invites us
`to disagree with the reasoning of Sotera itself and the Director’s Memo,
`which we are bound to follow. Accordingly, Patent Owner’s argument is
`unavailing.
`Patent Owner also urges us not to accept a “late” Sotera stipulation.
`Prelim. Sur-reply 5. We disagree that Petitioner’s Sotera stipulation is late.
`It is within our discretion to permit Petitioner to file a stipulation prior to
`
`7
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`
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`IPR2023-01021
`Patent 10,917,737 B2
`institution. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13
`(PTAB Sept. 7, 2022) (precedential).
`We therefore decline to discretionarily deny institution in view of the
`related District Court litigation.
`
`Legal Standards
`
`Petitioner bears the burden to demonstrate unpatentability, and that
`
`burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`
`A claim is unpatentable for obviousness 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.” 35 U.S.C. § 103; see also 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 ordinary skill in the art; and (4)
`when in evidence, objective evidence of nonobviousness.9 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
` Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art (“POSITA”)
`“would have had a Bachelor’s degree in computer science/engineering, or a
`
`
`9 The parties have not directed our attention to any objective evidence of
`obviousness or non-obviousness.
`
`8
`
`
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`IPR2023-01021
`Patent 10,917,737 B2
`related field, and at least two years of industry experience, or academic
`research experience, in virtual/augmented reality, including visual and audio
`modeling and rendering” and that “[a]dditional education can compensate
`for less experience, and vice-versa.” Pet. 3 (citing Ex. 1003 ¶¶ 34–40).
`Patent Owner “applies Petitioner’s characterization of a POSITA.” Prelim.
`Resp. 2.
`
`For purposes of this Decision, we also adopt Petitioner's proposal as
`reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate
`level of skill in the art).
`
` Claim Construction
`We apply the same claim construction standard used in district court
`actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b).
`In applying that standard, claim terms generally are given their ordinary and
`customary meaning as would have been understood by a person of ordinary
`skill in the art at the time of the invention and in the context of the entire
`patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir.
`2006) (citing Phillips, 415 F.3d at 1312–17).
`Petitioner asserts that “[t]he prior art relied on in this Petition
`discloses the subject matter of the challenged claims under any reasonable
`construction, including their plain meaning.” Pet. 4. We understand
`
`9
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`IPR2023-01021
`Patent 10,917,737 B2
`Petitioner’s position to be that no claim construction is required. See id.
`
`Patent Owner disagrees with Petitioner’ contention that we should
`apply “any reasonable construction,” and instead argues that “[t]he claim
`terms should be given their ‘ordinary and customary meaning’ as understood
`by a POSITA in view of the patent claims, specification[,] and prosecution
`history.” Prelim. Resp. 2–3 (citations omitted). Patent Owner further argues
`that “[h]ere, no express constructions of the claims are necessary.” Id. at 3.
`We agree with Patent Owner that at this point in this proceeding, “no
`express constructions of the claims are necessary.” Prelim. Resp. 3.
`
` Ground One: Alleged Obviousness of Claims 1–20 in View of
`the Combined Teachings of Pedrotti, Jang, and Begault
`Petitioner contends that claims 1–20 are unpatentable over the
`combined teachings of Pedrotti, Jang, and Begault. Pet. 4–46. For the
`reasons discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing on this ground.
`1. Pedrotti (Ex. 1005)
`Pedrotti is a U.S. patent for a “System and Method for Assisting a
`User in Remaining in a Selected Area While the User is in a Virtual Reality
`Environment” that seeks to aid a user in avoiding physical obstacles while in
`a virtual environment. Ex. 1005, codes (54), (57). Pedrotti discloses an
`embodiment in which the user “wear[s] a head-mounted display
`([“]HMD[”]) and hold[s] a handheld controller” that includes a tracker that
`“provides information regarding a position of the handheld controller.” Id.
`at 2:44–49.
`Pedrotti further discloses determining a selected area, for example, a
`“safe area,” in “which the user or another person has determined is clear of
`
`10
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`IPR2023-01021
`Patent 10,917,737 B2
`physical obstacles in the physical world so that the user may move freely
`without coming into contact with such physical obstacles.” Ex. 1005, 4:32–
`36. Additionally, Pedrotti discloses that the handheld controller may be in
`the shape of an object that appears in the virtual world. Id. at 16:35–42.
`2. Jang (Ex. 1006)
`Jang is a U.S. patent for an “Apparatus and Method for Sound
`Processing in a Virtual Reality System.” Ex. 1006, code (54). Jang
`describes the generation of sound in a virtual reality system, which “may use
`a localization technique capable of expressing the virtual location.” Id.
`at 1:42–45. Specifically, Jang uses a sound processing unit to generate a
`sound output from a “focus area” that is different from a sound output
`generated from an “unfocused area.” Id. at 2:32–3:4. For example, as a
`control unit detects a space shift from a first space to a second space in the
`virtual reality space, the volume of sound from the first space may be
`gradually decreased as the volume of sound from the second space is
`gradually increased. Id.
`3. Begault (Ex. 1007)
`Begault is a book titled “3-D Sound for Virtual Reality and
`Multimedia.” Ex. 1007, 1–2. Begault discloses “a sound subsystem in a
`virtual reality system” that includes a signal source, a signal processor, and
`active noise cancellation technology. Id. at 12–13.
`Begault discloses an example in which “[a]ll types of sonic input
`could be directionalized to a specific location, controlled by the user.” Ex.
`1007, 172. In this example, “the audio spatial mapping can correspond to a
`prioritization scheme.” Id. (emphasis omitted). Begault further discloses
`that the user may hear different sound inputs from different spatial locations,
`
`11
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`IPR2023-01021
`Patent 10,917,737 B2
`such that “spatial location informs the listener as to the prioritization” of the
`sound. Id. at 172–173.
`4. Rationale to combine Pedrotti, Jang, and Begault
`Petitioner asserts that “Pedrotti discloses ‘sight and sound’ as the
`‘most commonly used’ senses in virtual environments ([Ex. 1005], 1:14-20)
`but does not address sound processing.” Pet. 8. Petitioner reasons that a
`person of ordinary skill in the art “would have been motivated to look to
`references, like Jang and Begault, which disclose advantageous sound
`processing techniques providing ‘a higher sense of realism’ and enabling
`‘a rich auditory environment.’” Id. (citing Ex. 1006, 1:42–56, 2:9–11,
`2:26–28; Ex. 1007, 10–11, 13). Petitioner reasons further that “[a]dding
`Jang and Begault’s sound processing techniques would have amounted to
`no more than applying known techniques (e.g., binaural sound processing) to
`a known device (Pedrotti’s HMD) ready for improvement to yield
`predictable results (spatialization of sound for an immersive VR
`experience).” Id. (citing Ex. 1003 ¶¶ 212–213, 220).
`Petitioner also reasons that a person of ordinary skill in the art “would
`have understood that providing binaural sound would enhance the sense of
`‘presence’ for users, making the VR experience more immersive” and that
`“binaural sound was known to enhance perception of space, distance, and
`size within virtual environments.” Pet. 9. In addition, Petitioner asserts that
`“binaural sound, as disclosed by Jang and Begault, was a computationally
`efficient way of achieving these goals.” Id. (citing Ex. 1007, 11; Ex.1139;
`Ex. 1003 ¶¶ 221–224).
`Noting that “Pedrotti and Jang are Sixense and Samsung patents,
`respectively,” Petitioner reasons that a person of ordinary skill in the art
`
`12
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`“would have known that both companies were working on VR systems,
`including in concert and on complementary technologies” such that a person
`of ordinary skill in the art “would have reasonably expected to succeed in
`combining the teachings of these references, which disclose well-known
`hardware.” Pet. 9–10 (citing Ex. 1003 ¶¶ 215–217; Ex. 1086; Ex. 1080).
`Patent Owner contends that “Petitioner has failed to establish that a
`POSITA would have been motivated to combine Pedrotti with Jang . . . as
`Jang does not address a virtual reality user physically moving in a physical
`space but instead is directed to sound processing when a character moves
`within a virtual world to minimize lag.” Prelim. Resp. 5.
`Patent Owner’s arguments are unavailing as they do not address
`Petitioner’s reasoning in support of the proposed combination. Petitioner
`relies on Jang’s teachings regarding use of sound processing techniques that
`provide more realism and a rich auditory environment in a virtual reality
`environment. Pet. 8–9. Even assuming that Patent Owner is correct that
`Jang is directed to sound processing when a character moves within a virtual
`world to minimize lag, we agree with Petitioner at this stage that it would
`have been obvious to apply Jang’s technique to Pedrotti’s method. KSR, 550
`U.S. at 417 (“if a technique has been used to improve one device, and a
`person of ordinary skill in the art would recognize that it would improve
`similar devices in the same way, using the technique is obvious unless its
`actual application is beyond his or her skill”). On the record before us, we
`determine that Petitioner has articulated sufficient reasoning in support of
`the proposed combination at this stage of the proceeding.
`5. Independent Claim 1
`Petitioner asserts that the combined teachings of Pedrotti, Jang, and
`
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`Begault disclose or suggest all of the limitations of claim 1. Pet. 10–25.
`a. Undisputed Limitations
`Patent Owner does not dispute Petitioner’s assertions regarding the
`preamble to claim 1 or limitations 1[b], 1[d], or 1[e]. Prelim. Resp. 5–23.
`We summarize Petitioner’s assertions below.
`1[pre]: A method executed by one or more electronic
`i.
`devices, the method comprising:
`For the preamble to claim 1, Petitioner assert that “Pedrotti disclosed
`methods implemented with electronic devices, including a ‘HMD’ and
`‘handheld controller[s].’” Pet. 10 (citing Ex. 1005, 2:27–59; Welch ¶¶ 226–
`228).
`
`ii.
`
`1[b]: designating, with the HPED held in the hand of
`the user, a sound localization point (SLP) in empty
`space in the zone above the physical floor from where
`binaural sound originates to the user;
`For limitation 1[b], Petitioner asserts that “Pedrotti disclosed using an
`HPED to move virtual objects in its zone, including in empty space above a
`physical floor” and that “Pedrotti’s controllers are ‘use[d] to control certain
`actions or events in the virtual world,’ including by ‘moving’ virtual objects
`such as virtual weapons and sports equipment.” Pet. 14 (citing Ex. 1005,
`4:4–15, 5:25–36, 8:14–35, 9:26–52, 16:33–42, Fig. 8; Ex. 1003 ¶ 243).
`Petitioner reasons that a person of ordinary skill in the art “would have
`known to associate binaural sounds with Pedrotti’s VR objects and have
`sound move with them because these were fundamental features of VR
`before June 2016.” Id. (citing Ex. 1003 ¶¶ 241, 251–253). Petitioner asserts
`further that “Jang confirms the obviousness of moving binaural sound-
`producing virtual objects, e.g., characters” in that “Jang disclosed ‘game
`joystick[s]’ and ‘controller[s]’ and that a user ‘may see, hear, and otherwise
`
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`sense the virtual environment’ and ‘interact with’ it, including ‘other avatars,
`characters, objects, or features.’” Id. at 15 (citing Ex. 1006, 1:35–38, 6:35–
`38, 6:44–47).
`Petitioner provides further reasons why limitation 1[b] would have
`been obvious to a person of ordinary skill in the art. Pet. 15–19. As Patent
`Owner has not contested Petitioner’s assertions regarding limitation 1[b] we
`do not reproduce Petitioner’s further assertions regarding this limitation.
`1[d]: processing, by a processor, sound with head-
`iii.
`related transfer functions (HRTFs) to generate the
`binaural sound that externally localizes to the user at
`the location of the SLP in empty space in the zone
`above the physical floor; and
`For limitation 1[d], Petitioner asserts that “Jang disclosed, or at a
`minimum rendered obvious, processing, by a processor, sound with HRTFs
`to generate binaural sound that externally localizes to a user at SLPs.” Pet.
`21. In support of this assertion, Petitioner contends that “Jang taught that,
`‘to give the sense of reality to the sound,’ one can use ‘a localization
`technique capable of expressing the virtual location’ of ‘a sound-generating
`object’ and HRTFs” and that Jang “disclosed a ‘sound processing unit’
`comprising processors that ‘process sound’ and identify ‘exact sound-
`generating location[s].’” Id. (citing Ex. 1006, 1:42–51, 1:52–56, 7:38–63,
`8:54–9:3). Petitioner reasons that “it would have been obvious that
`designated SLPs would be ‘in empty space in the zone above the physical
`floor,’” that a person of ordinary skill in the art “would have known that
`Pedrotti’s processor could and would manage sound, including as Jang
`described,” that “Pedrotti recognized that ‘sight and sound’ are ‘the senses
`most commonly used [] to create virtual reality,’” and that “it was
`commonplace before June 2016 to use a processor to process sound with
`
`15
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`IPR2023-01021
`Patent 10,917,737 B2
`HRTFs to generate binaural sound.” Id. (citing id. at 13–19; Ex. 1006, 1:18–
`20; Ex. 1003 ¶¶ 293–296).
`Petitioner further asserts that “Begault confirms this” and provides
`further reasoning as to why limitation 1[d] would have been obvious to one
`of ordinary skill in the art. Pet. 22.
`1[e]: displaying, with the WED worn on the head of
`iv.
`the user, a virtual image at the location of the SLP in
`empty space in the zone above the physical floor from
`where the binaural sound originates to the user.
`For limitation 1[e], Petitioner asserts that “Pedrotti disclosed
`displaying virtual images with its HMD” and that
`Jang disclosed outputting “audio, sound, and/or other sensory
`data” “to the user to represent the virtual environment,” and that
`its sound system “check[s] sound source information on other
`characters and other objects existing in [] virtual reality spaces”
`to “provide[] the virtual reality apparatus 110 with sound sources
`occurring in real time according to the relative locations or
`situations of the character in the virtual reality environment.”
`Pet. 23 (citing id. at 10–13; Ex. 1006, 6:17–20, 6:36–42, 7:24–32). Thus,
`according to Petitioner, a person of ordinary skill in the art “would have
`known that when Pedrotti’s controller is used to move virtual objects, for
`example to position audio sources in a Pedrotti-Jang . . . system . . . such a
`system would (or at a minimum obviously would) display virtual images at
`the locations to which the virtual objects were moved and/or assigned
`(SLPs).” Id. at 23–24 (citing Ex. 1003 ¶¶ 308–311).
`
`Petitioner provides further reasons why the combined teachings of
`Pedrotti, Jang, and Begault would have rendered limitation 1[e] obvious.
`Pet. 24–25. As Patent Owner has not contested Petitioner’s assertions
`
`16
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`IPR2023-01021
`Patent 10,917,737 B2
`regarding limitation 1[e] we do not reproduce Petitioner’s further assertions
`regarding this limitation.
`v. Conclusion For Uncontested Limitations
`For the preamble of claim 1 and limitations 1[b], 1[d], and 1[e], we
`have reviewed Petitioner’s assertions including the cited portions of Pedrotti,
`Jang, and Begault, as well as, Dr. Welch’s testimony in support of these
`assertions. We determine that, on this record, the combination of Pedrotti,
`Jang, and Begault discloses the preamble (whether or not limiting) and these
`limitations. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L.,
`759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is
`‘not required to address undisputed matters’ or arguments about limitations
`with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d
`966, 974 (Fed. Cir. 2016)).
`b. Disputed Limitations
`Patent Owner contends that the combination fails to teach fully-
`integrated tracking by a wearable electronic device. Prelim. Resp. 5–23. In
`particular, Patent Owner contends that the proposed combination would not
`have rendered limitations 1[a] and 1[c] obvious to a person of ordinary skill
`in the art. Id. at 16–23. We first summarize Petitioner’s positions regarding
`these limitations and then address Patent Owner’s arguments below.
`1[a]: tracking, with a wearable electronic device
`i.
`(WED) worn on a head of a user, movement of a
`handheld portable electronic device (HPED) held in a
`hand of the user such that the movement of the HPED
`defines a size and a shape of a three-dimensional
`(3D) zone that extends from a physical floor and
`around the user;
`Petitioner asserts that “[u]sers of Pedrotti’s system ‘wear a head-
`mounted display (HMD)’ (WED), and ‘hold a handheld controller’ (HPED)”
`
`17
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`IPR2023-01021
`Patent 10,917,737 B2
`and that “Pedrotti’s handheld controller includes a ‘tracker,’ which ‘provides
`information regarding a position of the handheld controller.’” Pet. 11 (citing
`Ex. 1005, 2:44–49, 15:7–12; 4:49–5:24). Petitioner asserts further that
`“Pedrotti’s system also includes a processor that tracks the controllers,
`determining ‘the position of the handheld controller . . . using information
`from the controller tracker’” and that “[t]his processor, which may be ‘in the
`HMD,’ ‘knows where the user’s head and hands are located.’” Id. (citing
`Ex. 1005, 12:29–39, 12:49–57, 16:22–24). Thus, according to Petitioner,
`“Pedrotti’s HMD tracked (or at a minimum obviously tracked) movement of
`an HPED.” Id. (citing Ex. 1003 ¶¶ 229–232).
`Petitioner further asserts that “Pedrotti’s HMD-tracked controller
`‘defines a size and a shape of a three-dimensional (3D) zone that extends
`from a physical floor and around the user’” in that Pedrotti’s system “can
`determine ‘a boundary of a selected area’ in a virtual environment, so users
`‘may move freely’ and without contacting ‘obstacles.’” Pet. 11 (citing Ex.
`1005, 2:49–51, 4:32–36).
`1[c]: tracking, with the WED worn on the head of the
`ii.
`user, the HPED held in the hand of the user such that
`the HPED provides a location to the WED of the SLP
`in empty space in the zone above the physical floor
`from where the binaural sound originates to the user;
`Petitioner asserts that “Pedrotti taught tracking controllers (HPEDs)
`with its HMD (a WED).” Pet. 19 (citing id. at 10–13). Petitioner reasons
`that a person of ordinary skill in the art “would have known and understood
`that when a Pedrotti controller is used to move virtual objects, for example
`to position sound sources in a Pedrotti-Jang (or Pedrotti-Jang-Begault)
`system, that action would (or at a minimum obviously would) provide
`Pedrotti’s HMD the locations to which the virtual objects were moved
`
`18
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`
`
`IPR2023-01021
`Patent 10,917,737 B2
`and/or assigned (SLPs).” Id. (citing Ex. 1003 ¶¶ 281, 286–289). Petitioner
`asserts further that “Pedrotti’s processor, ‘in the HMD,’ ‘us[es] information’
`it receives ‘from the controller tracker[s],’ including to ‘generate and output’
`appropriate instructions to the HMD.” Id. (citing Ex. 1005, 2:49–59). Based
`on these assertions, Petitioner reasons that a person of ordinary skill in the
`art “would have known that Pedrotti’s processor could and would receive
`locations of SLPs provided by Pedrotti’s controllers, so binaural sounds
`could be processed to originate from assigned locations, which, as noted,
`would obviously include locations in ‘empty space’ and ‘above a physical
`floor’ in Pedrotti’s zone.” Id. at 19–20 (citing id. at 13–19; Ex. 1003 ¶¶ 290–
`291; Ex. 1006, 4:19–39).
`Petitioner provides two examples in support of its position. First,
`Petitioner asserts that “if Pedrotti’s handheld controller designates locations
`for an announcer or a pep band in Jang’s virtual basketball court, the HPED
`making these designations could and would provide the locations for these
`sensory elements’ binaural sound.” Pet. 20 (citing Ex. 1003 ¶ 292; Ex.
`1006, 10:32–43). Second, Petitioner asserts that “if Pedrotti’s controller
`controls an interface facilitating ‘spatial audio mapping,’ as described by
`Begault, that too could and would provide positions for the generation of
`binaural sound.” Id. (citing id. at 13–19; Ex. 1003 ¶¶ 289–290; Ex. 1007,
`
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