Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Date: January 9, 2024
`
`
`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.
`____________________________
`
`IPR2023-01022
`Patent 11,172,316 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
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Date: January 9, 2024
`
`
`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.
`____________________________
`
`IPR2023-01022
`Patent 11,172,316 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
`
`
`
`
`
`
`
`IPR2023-01022
`Patent 11,172,316 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. 11,172,316 B2 (Ex. 1001 (“the ’316 patent”)). See Pet. 2. Eight
`KHZ, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With our prior authorization (Ex. 1144), Petitioner filed a
`Preliminary Reply (Paper 8, “Prelim. Reply”) and Patent Owner filed a
`Preliminary Sur-Reply (Paper 9, “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 ’316 patent.
`
`Related Matters
`
`The parties indicate that the ’316 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 5.
`The parties identify U.S. Application No. 17/520,584 as an
`application related to the ’316 patent. Pet. 71; Paper 5. Petitioner
`additionally identifies U.S. Application Nos. 15/049,071, 15/424,901,
`
`2
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`IPR2023-01022
`Patent 11,172,316 B2
`15/944,796, 16/162,416, 16/445,268, 16/558,078, and 16/938,936 as
`applications related to the ’316 patent. Pet. 71.
`Patent Owner identifies U.S. Patent Nos. 10,798,509, 10,728,682,
`10,602,291, 10,440,489, 10,117,037, 9,980,072, and 9,591,427 as patents
`related to the ’316 patent. Paper 5.
`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), IPR2023-01021 (U.S. Patent No. 10,917,737 B2),
`IPR2023-01023 (U.S. Patent No. 10,798,509 B1), and IPR2023-01024 (U.S.
`Patent No. 11,290,836 B2).
`
`The ’316 Patent (Ex. 1001)
`
`The ’316 patent, for a “Wearable Electronic Device Displays a 3D
`Zone from Where Binaural Sound Emanates,” relates to “creat[ing] and
`maintain[ing] virtual environments, virtual reality, and augmented reality.”
`Ex. 1001, code (54), 1:7–23. According to the ’316 patent, Head Related
`Transfer Functions (“HRTFs”) may be used to artificially create localized
`binaural sound, but HRTFs vary depending on various individual
`physiological traits and are difficult to measure and obtain. Id. at 1:7–23.
`The ’316 patent seeks to obtain more accurate HRTFs and “accurately
`localize binaural sound.” Id. at 2:59–65.
`The ’316 patent discloses a portable electronic device (“PED”) that
`“divides an area around a user into a three-dimensional ([‘]3D[’]) zone” and
`a head-worn device that displays the zone when the head-worn device
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`IPR2023-01022
`Patent 11,172,316 B2
`detects that the user is leaving the zone and “plays binaural sound that
`emanates to the user from sound localization points ([‘]SLPs[’]) inside the
`zone.” Ex. 1001, code (57).
`
`Challenged Claims
`
`Petitioner challenges claims 1–20 of the ’316 patent. Pet. 2–70. Of
`the challenged claims, claims 1, 9, and 17 are independent. Independent
`claim 1 is illustrative of the challenged claims and is reproduced below with
`Petitioner’s labeling of the limitations for ease of reference.
`1.
`1[pre] A method comprising:
`1[a] dividing, with a portable electronic device (PED)
`held in a hand of a user, an area around the user into a zone that
`extends around the user and that includes a sound localization
`point (SLP) from where binaural sound in empty space
`originates to the user;
`1[b] playing, with speakers in a wearable electronic
`device (WED) worn on a head of the user, the binaural sound
`that originates from the SLP in empty space;
`1[c] tracking, with one or more sensors in the WED worn
`on the head of the user, the PED to determine when the PED
`held in the hand of the user is moving outside the zone that
`extends around the user; and
`1[d] displaying, with the WED worn on the head of the
`user, a virtual reality (VR) image that shows the zone in
`response to the WED determining that the PED is moving
`outside the zone.
`Ex. 1001, 40:57–41:6.
`
`4
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`IPR2023-01022
`Patent 11,172,316 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.47–55.
`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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`Patent 11,172,316 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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`IPR2023-01022
`Patent 11,172,316 B2
`If the PTAB institutes the pending IPR in IPR2023-01022
`challenging the patentability of claims 1-20 of the ’316 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 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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`Patent 11,172,316 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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`Patent 11,172,316 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. 5 (citing Ex. 1003 ¶¶ 32–37).
`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 challenged claims are unpatentable under
`any reasonable construction, including their plain meaning.” Pet. 5. We
`understand Petitioner’s position to be that no claim construction is required.
`
`9
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`Patent 11,172,316 B2
`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. 5–44. 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
`
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`IPR2023-01022
`Patent 11,172,316 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,
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`Patent 11,172,316 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. 9. 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 ¶¶ 211–212, 219).
`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. 9–10. In addition, Petitioner asserts
`that “binaural sound, as disclosed by Jang and Begault, was a
`computationally efficient way of achieving these goals.” Id. at 10 (citing
`Ex. 1007, 11; Ex.1139; Ex. 1003 ¶¶ 220–223).
`Noting that “Pedrotti and Jang are Sixense and Samsung patents,
`respectively,” Petitioner reasons that a person of ordinary skill in the art
`
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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. 10 (citing Ex. 1003 ¶¶ 214–216; Ex. 1086; Ex. 1080).
`Patent Owner does not directly contest Petitioner’s reasoning in
`support of the proposed combination. Rather, Patent Owner challenges
`Petitioner’s reasoning as it pertains to its assertions for limitation 1[c].
`Prelim. Resp. 22. We address Patent Owner’s contentions in our discussion
`of limitation 1[c] in Section II.E.5.d below.
`5. Independent Claim 1
`Petitioner asserts that the combined teachings of Pedrotti, Jang, and
`Begault disclose or suggest all of the limitations of claim 1. Pet. 11–23.
` 1[pre]: A method comprising:
`For the preamble to claim 1, Petitioner assert that “Pedrotti disclosed a
`‘method of assisting a user . . . in remaining in a selected area’” and that
`“Jang disclosed a ‘method to perform sound processing.’” Pet. 11 (citing
`Ex. 1005, 2:27–59; Ex. 1006, 2:15–20; Ex. 1003 ¶¶ 567–569). Patent
`Owner does not dispute Petitioner’s assertions.
` 1[a]: dividing, with a portable electronic device (PED) held
`in a hand of a user, an area around the user into a zone that
`extends around the user and that includes a sound
`localization point (SLP) from where binaural sound in
`empty space originates to the user;
`For limitation 1[a], Petitioner asserts that “[a] user of Pedrotti’s
`system ‘wear[s] a head-mounted display (HMD)’ and ‘hold[s] a handheld
`controller’ (PED) comprising a ‘tracker,’ which ‘provides information
`regarding a position of the handheld controller.’” Pet. 11–12 (citing Ex.
`
`13
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`1005, 2:44–57, 15:7–12, 4:49–5:24). Petitioner asserts further that in
`Pedrotti’s method “[a] processor tracks the controller’s movement (id.
`12:31-39), including to determine ‘a boundary of a selected area,’ so a user
`‘may move freely’ without hitting ‘obstacles.’” Id. at 12 (citing Ex. 1005,
`2:49–51; 4:32–36). According to Petitioner, “[t]hat boundary can be defined
`‘by having the user walk around a perimeter chosen by the user with one of
`the trackers,’ e.g., a controller tracker, ‘to define the outer boundary of [the]
`selected area.’” Id. (citing Ex. 1005, 14:56–65, 15:13–22).
`In addition, Petitioner asserts that
`After Pedrotti’s boundary is defined, e.g., by the
`“measured path of tracker motion” (id. Fig. 14), and a user is in
`“the virtual world,” when “the processor determines from the
`position of the handheld controller that the handheld controller is
`within a preselected distance of the boundary,” it instructs the
`HMD to display “a visual warning to the user,” e.g., “grid lines”
`or “a virtual fence.”
`Pet. 12 (citing Ex. 1005, 11:43–55, 15:30–37, Figs. 11, 14–15). Thus,
`according to Petitioner, “Pedrotti’s handheld controller (PED) divides an
`area around a user into a zone—Pedrotti’s ‘selected’ or ‘safe’ area, bound by
`Pedrotti’s boundary and virtual fence” and “[t]his zone extends (or at a
`minimum obviously extends) around the user.” Id. (citing Ex. 1003 ¶¶ 570–
`577; Ex. 1005, Figs. 11, 14).
`Patent Owner contends that “the boundary defining technique
`described by Pedrotti fails to teach or suggest dividing, with a PED held in a
`hand of a user, an area around the user into a zone that extends around the
`user.” Prelim. Resp. 17 (citing Ex. 2001 ¶34). According to Patent Owner,
`“by having the user walk around a perimeter with a tracker, as illustrated in
`Figure 14 of Pedrotti, . . . Pedrotti merely identifies sampling points adjacent
`
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`to the user while the PED is held in the hand of the user.” Id. (citing Ex.
`1005, 14:56–65; Ex. 2001 ¶ 34).
`Regarding the requirement for SLPs within the boundary, Petitioner
`asserts that “Pedrotti’s controller-divided zone will (or at a minimum will
`obviously) include SLPs from which binaural sound will originate, for
`example, when a user plays a VR game.” Pet. 13 (citing Ex. 1003 ¶¶ 579–
`580). Patent Owner reasons that a person of ordinary skill in the art “would
`have known that virtual objects (e.g., Pedrotti’s sword or another ‘virtual
`weapon’) could and would have associated binaural sounds that move with
`them to multiple locations (multiple SLPs)” and that “[a]ssociating and
`moving sounds with virtual images were ‘extremely important’ features of
`VR well before February 2016.” Id. at 13–14 (citing Ex. 1003 ¶¶ 580, 625–
`628; Ex. 1005, 1:19–20; Ex. 1125, 17:22–18:35).
`In addition, Petitioner asserts that “Jang confirms the obviousness of
`using, in zones around users, an SLP ‘from where binaural sound in empty
`space originates to the user,’ e.g., during VR game play” and that “Jang’s
`sound processing system ‘check[s] sound source information’ on ‘characters
`and other objects’ and provides localized audio (i.e., binaural sound) for
`‘sound sources’ ‘according to the[ir] relative locations’ (SLPs), including in
`‘sound areas’ around a user.” Pet. 14 (citing Ex. 1006, 7:24–59, 1:28–2:11,
`5:35–37, 8:18–49, 8:65–9:3, Fig. 2; Ex. 1003 ¶¶ 581–582, 101–129).
`Patent Owner contends further that “[t]he boundary defined by
`Pedrotti’s user walking with the PED never extends around a user.” Prelim.
`Resp. 17 (citing Ex. 2001 ¶ 34); see also id. at 14. In support of this
`contention, Patent Owner argues that “Pedrotti can only collect sampling
`points adjacent to the user and never collects sampling points around the
`
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`Patent 11,172,316 B2
`user to divide an area into a zone that extends around the user.” Id. Thus,
`according to Patent Owner, “this claim element is not taught or suggested by
`Pedrotti” and “the other references do not obviate this deficiency of
`Pedrotti.” Id. at 18.
`Based on the current record, Patent Owner’s contentions are
`unavailing as they are not commensurate in scope with limitation 1[a].
`Limitation 1[a] merely requires “dividing, with a portable electronic device
`(PED) held in a hand of a user, an area around the user into a zone that
`extends around the user.” Ex. 1001, 40:58–60. It does not require that the
`area extending around the user be determined at a single location or point in
`time when the user is holding the PED. Pedrotti’s handheld controller is
`used (by repeated samples as the user moves around with the PED) to divide
`the area around the user into a “zone that extends around the user” when the
`sampling is complete and the user is within the defined zone.
` 1[b]: playing, with speakers in a wearable electronic device
`(WED) worn on a head of the user, the binaural sound that
`originates from the SLP in empty space;
`For limitation 1[b], Petitioner asserts that ‘“playing, with speakers in a
`wearable electronic device (WED) worn on a head of the user, the binaural
`sound that originates from the SLP in empty space,’ would have been
`obvious for the same reasons as limitation 1[a].” Pet. 18 (citing id. at 11–
`18). In addition, Petitioner asserts that “playing binaural sound with a
`WED’s speakers would have been obvious over Pedrotti because Pedrotti’s
`HMD plays sound, Pedrotti, 2:27-43, 15:56-58 (‘audio warning’), and
`speakers were routinely used in HMDs before February 2016, as Jang
`shows.” Id. (citing Ex. 1006, 1:44–45, 7:5–6; Ex. 1003 ¶¶ 593–599).
`
`16
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`Patent 11,172,316 B2
`Patent Owner does not dispute Petitioner’s assertions. Prelim. Resp.
`
`5–27.
`
` 1[c]: tracking, with one or more sensors in the WED worn
`on the head of the user, the PED to determine when the PED
`held in the hand of the user is moving outside the zone that
`extends around the user; and
`For limitation 1[c], Petitioner asserts that “Pedrotti’s processor, which
`may be ‘in the HMD’ (WED) (id. 16:20-24), tracks the HMD and handheld
`controllers using sensors so it ‘knows where the user’s head and hands are
`located.’” Pet. 19 (citing Ex. 1005, 2:49–57, 2:60–3:12, 4:32–44, 12:31–41,
`15:7–12). Petitioner asserts further that “Pedrotti taught that trackers in
`controllers, e.g., ‘light-emitting trackers,’ ‘provide position and orientation
`information to’ sensors, e.g., ‘a camera mounted on [a] base station or
`elsewhere.’” Id. (citing Ex. 1005, 5:8–24). Thus, according to Petitioner, a
`person of ordinary skill in the art “would have known and been motivated to
`use Pedrotti’s HMD with sensors, e.g., cameras, to track Pedrotti’s
`controllers, e.g., light-emitting controller trackers.” Id. (citing Ex. 1003
`¶¶ 600–602).
`In addition, Petitioner asserts that “Pedrotti’s system helps a user stay
`in a zone during gameplay and displays a virtual fence ‘when the user’s head
`or hands are approaching the [zone’s] boundary as determined by the
`trackers on the user’s head or hands’—e.g., when Pedrotti’s HMD, with its
`processor, determines controller trackers are approaching the boundary.”
`Pet. 19–20 (citing Ex. 1005, 13:34–62, 2:60–3:12, 5:8–24, 12:35–13:11,
`16:20–24). Petitioner asserts further that Pedrotti
`taught that “the preselected distance” triggering its warning “may
`vary by application” and users’ expected body movements (id.
`13:46-62), and that if the “user’s head or hand,” with a controller,
`
`17
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`IPR2023-01022
`Patent 11,172,316 B2
`“goes beyond the boundary”—i.e., moves outside a zone—“the
`processor can cause the HMD to fade to black, and present, for
`example, only a warning message and/or a beacon or arrows
`directing the user to move in the direction of the boundary and
`the selected area.”
`Id. at 20 (citing Ex. 1005, 13:67–14:5; Ex. 1003 ¶¶ 600–609). Thus,
`according to Petitioner, “Pedrotti disclosed or at a minimum rendered
`obvious tracking a PED (a controller) with one or more sensors in a WED
`worn on a user’s head (e.g., a camera on Pedrotti’s HMD) to determine
`when the PED moves outside the zone (outside Pedrotti’s ‘safe area’
`boundary).” Id. (citing Ex. 1003 ¶¶ 610–612).
`Patent Owner contends that Pedrotti “does not disclose tracking, with
`one or more sensors in the (WED) worn on the head of the user the PED to
`determine when the user is located inside the zone – that is, an integrated
`tracking system in the HMD – but instead relies on a stationary base station
`that is external to the HMD.” Prelim. Resp. 18. Patent Owner argues that
`“Pedrotti consistently refers to the ‘processor’ used for tracking purposes as
`something outside of the HMD – the processor in the stationary base station,
`not a processor in the HMD,” and that “tracking the handheld controller with
`the HMD while worn on the head to define a safe area with the system
`disclosed by Pedrotti is directly contrary to Pedrotti’s teachings emphasizing
`the safety of the user by avoiding collisions with physical obstacles in the
`safe area.” Id. Patent Owner also contends that “Pedrotti’s light-emitting
`trackers in the controller are used by a camera mounted on the HMD to track
`the position of the controller . . . [and] would not track the position of the
`controller in relation to the ‘safe area,’ but instead would merely track the
`position of the controller relative to the HMD” such that
`
`18
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`IPR2023-01022
`Patent 11,172,316 B2
`there would be no motivation for a POSITA to look to Pedrotti’s
`HMD and light-emitting trackers to detect when the user is
`moving out of the zone because the relative distance between the
`HMD and the light-emitting trackers do not provide any
`feedback with regard to the location of the user with respect to
`the safe area.
`Id. at 21–22 (citing Ex. 2001 ¶ 37).
`Based on the current record, Patent Owner’s arguments are
`unconvincing because limitation 1[c] does not require an integrated tracking
`system in the HMD and does not preclude the use of a stationary base.
`Ex. 1001, 40:66–41:2. Claim 1 merely recites a method “comprising”
`tracking, “with” one or more sensors in the WED, movement of the PED,
`but does not expressly preclude other devices from being involved in the
`tracking. Petitioner has sufficiently demonstrated that Pedrotti’s method
`tracks the PED, with sensors in the WED, to determine when the PED is
`moving outside the zone.
` 1[d]: displaying, with the WED worn on the head of the user
`a virtual reality (VR) image that shows the zone in response
`to the WED determining that the PED is moving outside the
`zone.
`For limitation 1[d], Petitioner asserts that “Pedrotti disclosed, or at a
`minimum rendered obvious, a WED worn on the user’s head (HMD) that
`determines that a PED (controller) is moving outside a zone, and taught that,
`based on this determination, its HMD displays a VR image that shows the
`zone (Pedrotti’s ‘grid or virtual fence’).” Pet. 21 (citing id. at 11–21; Ex.
`1005, 4:32–44, 11:48–52, 12:51–13:11, 15:4–7, 15:35–55, Fig. 11; Ex. 1003
`¶¶ 613–615, 617). Petitioner asserts further that “Pedrotti’s fence is nearly
`identical to features [Patent Owner] contends in district court satisfy the
`limitation ‘displaying . . . a 3D virtual reali
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