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.
`____________________________
`
`IPR2023-01023
`Patent 10,798,509 B1
`____________________________
`
`
`
`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.
`____________________________
`
`IPR2023-01023
`Patent 10,798,509 B1
`____________________________
`
`
`
`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
`
`
`
`
`
`
`
`IPR2023-01023
`Patent 10,798,509 B1
`
`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 1–14 and 17–20 (the “challenged
`claims”) of U.S. Patent No. 10,798,509 B1 (Ex. 1001 (“the ’509 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 (2022). 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 ’509 patent.
`
`Related Matters
`
`The parties indicate that the ’509 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 Nos. 17/062,633 and 17/520,584
`as applications related to the ’509 patent. Pet. 71; Paper 5. Petitioner
`additionally identifies U.S. Application Nos. 15/049,071, 15/424,901,
`
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`IPR2023-01023
`Patent 10,798,509 B1
`15/944,796, 16/162,416, 16/445,268, and 16/938,936 as applications related
`to the ’509 patent. Pet. 71.
`Patent Owner identifies U.S. Patent Nos. 11,172,316, 10,440,489,
`10,117,038, 9,980,072, and 9,591,427 as patents related to the ’509 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),
`IPR2023-01022 (U.S. Patent No. 11,172,316 B1), and IPR2023-01024 (U.S.
`Patent No. 11,290,836 B2).
`
`The ’509 Patent (Ex. 1001)
`
`The ’509 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 ’509 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 ’509 patent seeks to obtain more accurate HRTFs and “accurately
`localize binaural sound.” Id. at 2:59–65.
`Accordingly, the ’509 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
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`IPR2023-01023
`Patent 10,798,509 B1
`head-worn device 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 1–14 and 17–20 of the ’509 patent.
`Pet. 4–70. Of the challenged claims, claims 1, 9, and 17 are independent.
`Independent claims 1 and 9 are illustrative of the challenged claims and are
`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
`includes multiples sound localization points (SLPs) from where
`binaural sound originates to the user;
`1[b] determining, with a wearable electronic device
`(WED) worn on a head of the user, when the user is located
`inside the zone;
`1[c] highlighting, while the user is located in the zone
`and with a display of the WED, one of the multiple SLPs in the
`zone when the PED held in the hand of the user is pointed at the
`one of the multiple SLPs in the zone; and
`1[d] playing, with the WED worn on the head of the user,
`the binaural sound that emanates from the one of the multiple
`SLPs in response to the one of the multiple SLPs being pointed
`at by the PED held in the hand of the user.
`Ex. 1001, 40:58–41–7.
`9.
`9[pre] A non-transitory computer readable storage medium
`storing instructions that one or more electronic devices execute as a
`method, the method comprising:
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`Patent 10,798,509 B1
`
`9[a] dividing, with a portable electronic device (PED) held in a
`hand of a user, an area around the user into a zone that includes sound
`localization points (SLPs) in empty space from where binaural sound
`originates to the user;
`
`9[b] determining, with a wearable electronic device (WED)
`worn on a head of the user, when the user is located inside the zone;
`9[c] determining, with the WED worn on the head of the user,
`when the user is leaving the zone; and
` 9[d] displaying, with the WED worn on the head of the user, a
`three dimensional (3D) virtual image of the zone in response to the
`WED determining that the user is leaving the zone.
`Ex. 1001, 41:57–42:4.
`The Alleged Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):1
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–14, 17–20
`103
`Pedrotti,2 Jang,3 Begault4
`1–14, 17–20
`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
`
`
`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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`IPR2023-01023
`Patent 10,798,509 B1
`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. 52–60.
`We consider the following factors when determining whether to deny
`institution under § 314(a) based on a parallel district court proceeding:
`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
`
`6
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`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
`If the PTAB institutes the pending IPR in IPR2023-01023
`challenging the patentability of claims 1-14 and 17-20 of the
`’509 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
`
`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).
`
`7
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`IPR2023-01023
`Patent 10,798,509 B1
`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
`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
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`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
`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. 4–5 (citing Ex. 1003 ¶¶ 32–37).
`Patent Owner “applies Petitioner’s characterization of a person of ordinary
`skill in the art.” 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).
`
`
`9 The parties have not directed our attention to any objective evidence of
`obviousness or non-obviousness.
`
`9
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`IPR2023-01023
`Patent 10,798,509 B1
`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.
`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. 3 (citations omitted). Patent Owner further argues
`that “[h]ere, no express constructions of the claims are necessary.” Id.
`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 1–14 and 17–20
`in View of the Combined Teachings of Pedrotti, Jang, and Begault
`Petitioner contend that claims 1–14 and 17–20 are unpatentable over
`the combined teachings of Pedrotti, Jang, and Begault. Pet. 5–45. For the
`reasons discussed below, Petitioner demonstrates a reasonable likelihood of
`
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`IPR2023-01023
`Patent 10,798,509 B1
`prevailing for some claims 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
`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
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`IPR2023-01023
`Patent 10,798,509 B1
`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,
`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
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`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. 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
`“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 explicitly contest Petitioner’s reasoning in
`support of the proposed combination. See Prelim. Resp. 5–35. To the extent
`that Patent Owner’s arguments regarding Ground 1 implicitly contest this
`reasoning, we address Patent Owner’s arguments in conjunction with the
`contested limitations below.
`5. Independent Claim 9
`Petitioner asserts that the combined teachings of Pedrotti, Jang, and
`Begault disclose or suggest all of the limitations of claim 9. Pet. 36–40. As
`Petitioner has demonstrated a reasonable likelihood of prevailing for claim
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`9, we begin our discussion of Ground 1 with this claim.
` 9[pre]: A non-transitory computer readable storage medium
`storing instructions that one or more electronic devices
`execute as a method, the method comprising:
`Petitioner asserts that “Pedrotti disclosed ‘a non-transitory computer-
`readable medium having embodied thereon a program . . . executable by a
`processor to perform’ its ‘method of assisting a user’ to ‘remain[] within a
`selected area of the physical world’” and that “Jang similarly disclosed that
`its ‘features and/or utilities’ ‘may be realized by a computer-readable
`medium having stored thereon a computer program to execute [its]
`method.’” Pet. 36 (citing id. at 11; Ex. 1005, 2:60–3:12; Ex. 1006, 4:45–55,
`3:16–19, 6:5–20, 12:57–63; Ex. 1003 ¶¶ 361–363). Patent Owner does not
`dispute Petitioner’s assertions. See generally Prelim. Resp.
` 9[a]: dividing, with a portable electronic device (PED) held
`in a hand of a user, an area around the user into a zone that
`includes sound localization points (SLPs) in empty space
`from where binaural sound originates to the user;
`For limitation 9[a], Petitioner refers to its assertions for limitation
`1[a]. Pet. 37. Regarding 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.’” Id. at 11
`(citing Ex. 1005, 2:44–57, 15:7–120, 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 11–12 (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
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`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,” which can be in
`the form of grid lines such as 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 its virtual fence.” Id. (citing Ex. 1003 ¶¶ 229–236).
`Petitioner also 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” and that
`“[a]ssociating and moving sounds with virtual images were ‘extremely
`important’ features of VR well before February 2016.” Pet. 13–14 (citing
`Ex. 1003 ¶¶ 238–239. 272–275; Ex. 1005, 1:19–20; Ex. 1125, 17:22–18:35).
`Based on these assertions, Petitioner 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).” Id.
`In addition, Petitioner asserts that “Jang confirms the obviousness of
`using, in zones around users (like Pedrotti’s), ‘multiple[] sound localization
`points (SLPs) from where binaural sound originates to the user,’ e.g., during
`VR game play” as “Jang’s sound processing system ‘check[s] sound source
`
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`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
`¶¶ 240–241, 101–129).
`Regarding limitation 9[a] specifically, Petitioner asserts that a person
`of ordinary skill in the art “would have known that SLPs in Jang’s sound
`areas in Pedrotti’s zone could and would be in ‘empty space,’ i.e., space not
`occupied by a physical object.” Pet. 37 (citing Ex. 1001, 6:1–5; Ex. 1003
`¶¶ 364–365; Ex. 1006, 4:19, 4:45–55).
`Patent Owner does not dispute Petitioner’s assertions regarding
`limitation 1[a] or its additional assertion and reasoning regarding limitation
`9[a]. See Prelim. Resp. 5–31.
` 9[b]: determining, with a wearable electronic device (WED)
`worn on a head of the user, when the user is located inside
`the zone;
`For limitation 9[b], Petitioner refers to its assertions regarding
`limitation 1[b]. Pet. 37. Regarding limitation 1[b], Petitioner asserts that
`“[u]sers of Pedrotti’s system wear HMDs (WEDs worn on heads), and hold
`controllers.” Id. at 18 (citing Ex. 1005, 2:44–47). Petitioner asserts further
`that “Pedrotti’s processor, which may be ‘in the HMD’ ([Ex. 1005,]16:20–
`24), tracks the HMD and controllers so it ‘knows where the user’s head’—
`i.e., the user—‘and hands are located.’” Id. (citing Ex. 1005, 2:49–57; 4:32–
`44, 12:31–47, 15:7–12). According to Petitioner, Pedrotti’s “HMD then
`makes determinations of when a user is located inside Pedrotti’s zone to help
`the user remain in the zone during gameplay.” Id. at 18–19 (citing id. at 5–
`7, 11–18; Ex. 1003 ¶¶ 251–261).
`
`16
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`IPR2023-01023
`Patent 10,798,509 B1
`Patent Owner contends that Pedrotti does not disclose “determining,
`with a wearable electronic device (WED) worn on the head of the user,
`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. 15, 28. Patent Owner asserts further
`that “[a]ll of Pedrotti’s teachings on tracking involve the stationary base
`station. Pedrotti teaches that whether by electromagnetic fields, light
`emitting trackers, or other forms, the HMD and handheld controller is
`tracked in relation to their distance from a base station.” Id. at 15 (citing
`Ex. 1005, 4:49–58, 5:7–24; Ex. 2001 ¶ 36).
`Patent Owner contends further 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.” Prelim. Resp. 17 (citing Ex. 2001 ¶ 37). According to Patent
`Owner, “the Pedrotti system does not envision and, indeed, cannot provide
`controller tracking via a processor of the HMD and thus, does not teach or
`suggest handheld controller tracking by an HMD (WED) worn on the head
`of the user.” Id. at 17–18 (citing Ex. 2001 ¶ 37).
`In addition, Patent Owner contends that
`Petitioner’s assertion 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, even if true, 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.
`Prelim. Resp. 18 (citing Ex. 2001 ¶ 37). Patent Owner asserts further that
`“the only component [in Pedrotti] that could be practically employed to track
`
`17
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`IPR2023-01023
`Patent 10,798,509 B1
`a boundary using relative position data would be a stationary device, such as
`the base station as described throughout Pedrotti.” Id. at 18–19 (citing Ex.
`1005, 4:49–57, 5:7–11, 6:3–10, 7:66–8:2, 10:20–27, 14:7–10,
`14:13–23).
`
`Patent Owner’s arguments are unavailing as they are based on the
`assumption that Petitioner’s proposed combination eliminates Pedrotti’s base
`station and that limitation 9[b] precludes the use of a base station with the
`WED. Neither of these assumptions is correct. Nothing in Petitioner’s
`challenge indicates that the proposed combination eliminates the use of
`Pedrotti’s base station. Moreover, nothing in claim 9 precludes the use of a
`base station in conjunction with the WED to track the user. Claim 9 merely
`recites a non-transitory computer readable storage medium storing
`instructions executed as a method “comprising” determining, “with” the
`WED, when the user is located inside the zone and leaving the zone, but
`does not expressly preclude other devices from being involved in those
`determinations.
` 9[c]: determining, with the WED worn on the head of the
`user, when the user is leaving the zone; and
`For limitation 9[c] Petitioner refers to its assertions for limitations 2[a]
`and 3[a]. Pet. 37 (citing id. at 24–26, 28). For limitation 2[a] Petitioner
`asserts 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. at 24 (citing Ex.
`1005, 5:8–24). Based on this assertion, Petitioner reasons that 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 the trackers in
`Pedrotti’s controllers, e.g., light-emitting controller trackers.” Id. (citing Ex.
`
`18
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`IPR2023-01023
`Patent 10,798,509 B1
`1003
`¶¶ 292–294).
`
`Petitioner asserts further that
`the processor in Pedrotti’s HMD “determine[s] from the position
`of [a] handheld controller that the handheld controller is within a
`first preselected distance from [a] boundary” and “generates
`instructions to the HMD to include in a display of a virtual world
`a visual warning such as a grid or virtual fence” when the user
`“comes within a preselected distance of the boundary” or goes
`“beyond the boundary,” e.g., to provide “a warning that the user
`is about to move out of the selected area.”
`Pet. 25 (citing Ex. 1005, 2:44–59, 3:54–58, 4:37–44, 12:35–13:11, 13:46–
`14:5, 13:63–67, 15:4–39, Figs. 11, 15). Petitioner also asserts that “Pedrotti
`taught that ‘the preselected distance’ triggering its warning ‘may vary
`by application’ and users’ expected body movements” and that “Pedrotti
`taught that if the user ‘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.
`(citing Ex. 1005, 13:46–62, 13:67–14:5). Thus, according to Petitioner,
`“Pedrotti disclosed or at a minimum rendered obvious tracking a PED (a
`Pedrotti 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 (when Pedrotti’s controller leaves the ‘safe area’ zone’s
`boundary).” Id. at 25–26 (citing Ex. 1003 ¶¶ 2
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