Trials@uspto.gov Paper 13
`571-272-7822 Date: October 15, 2025
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`MULLEN INDUSTRIES LLC,
`Patent Owner.
`____________
`
`IPR2025-00703
`Patent 11,033,821 B2
`____________
`
`
`Before KEN B. BARRETT, JEFFREY S. SMITH, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`2
`I. INTRODUCTION
`A. Background and Summary
` Meta Platforms, Inc. (“Petitioner”)1 filed a Petition requesting inter
`partes review of U.S. Patent No. 11,033,821 B2 (“the ’821 patent,”
`Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of
`claims 1, 4, 11, 16, 30, and 102 of the ’821 patent. Mullen Industries LLC
`(“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 10
`(“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary
`Reply (Paper 11, “Prelim. Reply”) and Patent Owner filed a Preliminary
`Sur-reply (Paper 12, “Prelim. Sur-reply”) directed to Patent Owner’s
`proposed construction of the term “physical playfield.”
` An inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . 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) (2023). Having
`considered the arguments and evidence presented by Petitioner and Patent
`Owner, we determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing on at least one of the challenged claims of the ’821
`patent. Accordingly, we institute an inter partes review as to all the
`challenged claims of the ’821 patent on all the grounds of unpatentability set
`forth in the Petition.
`
`1 Petitioner identifies Meta Platforms, Inc. as the real party in interest.
`Pet. 84.
`2 Patent Owner identifies Mullen Industries LLC as the real party in interest.
`Paper 3, 1; Paper 8, 1.
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`3
`B. Related Proceedings
` Both parties identify, as a matter involving or related to the ’821
`patent, Mullen Industries LLC v. Meta Platforms, Inc., No. 1:24-cv-00354-
`DAE (W.D. Tex.). Pet. 84; Paper 3, 1; Paper 8, 1.
` Petitioner states that it “will file petitions for inter partes review
`against U.S. Patent No. 10,967,270, U.S. Patent No. 8,585,476, U.S. Patent
`No. 9,744,448, U.S. Patent No. 10,179,277, U.S. Patent No. 10,828,559,
`U.S. Patent No. 11,376,493, U.S. Patent No. 11,904,243, U.S. Patent
`No. 11,947,716, U.S. Patent No. 12,019,791, U.S. Patent No. 9,662,582, and
`U.S. Patent No. 10,974,151.” Pet. 85.
`C. The ’821 Patent
` The ’821 patent is titled “Systems and Methods for Location Based
`Games and Employment of the Same on Location Enabled Devices.”
`Ex. 1001, code (54). According to the ’821 patent:
` The present invention provides an actual, reality-based
`video game in which a user’s physical (actual) location on a
`playfield, reflects a virtual game character’s virtual location in a
`video game environment. In this manner, an actual-reality
`(hereinafter “actuality”) video game system may be provided.
`Generally, an actuality game is a location-based game where a
`user’s location on a physical playfield corresponds to a video
`game character’s location on a virtual video game playfield.
`Id. at 2:27–35.
`D. Illustrative Claim
` Of the challenged claims of the ’821 patent, claims 1 and 102 are
`independent claims. The remaining challenged claims depend directly from
`claim 1. Claim 1, reproduced below with bracketed annotations inserted, is
`illustrative.
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`4
`1. [1. Pre] A system comprising:
`[1.a] a wireless communication device, wherein said wireless
`communication device comprises:
`[1.a.1] a display;
`[1.a.2] a locating device operable to determine the physical
`location of said locating device on a physical playfield; and
`[1.a.3] a processor coupled to said display and said locating
`device, wherein said processor is operable to provide a
`video game comprising a virtual character with a virtual
`location on a virtual playfield, said virtual character is
`displayed on said display, said virtual location on said
`virtual playfield corresponds to said physical location on
`said physical playfield, and a direction of gameplay of said
`videogame is operable to be established by recording a
`manually provided direction in response to a prompt
`requesting said manually provided direction.
`Ex. 1001, 23:59–24:9.
`E. Evidence
` Petitioner relies on the following references:
`Name Reference Exhibit No.
`Cheok A.D. Cheok et al., Human Pacman: A
`Sensing-based Mobile Entertainment System
`with Ubiquitous Computing and Tangible
`Interaction (May 2003)
`1006
`Nakamura JP 2001070658A, published Mar. 21, 2001 1007, 10383
`Foxlin077 US 5,645,077, issued July 8, 1997 1008
`Benini L. Benini et al., Palmtop Computers for
`Managing Interaction with Immersive Virtual
`Heritage (2002)
`1009
`Rallison US 5,991,085, issued November 23, 1999 1014
`
`3 Exhibit 1038 is the English translation of Nakamura (Ex. 1007), which is in
`Japanese. Petitioner cites to Exhibit 1007. See, e.g., Pet. 12.
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`5
` Petitioner also relies on the declaration of Gregory Welch, Ph.D.
`(Ex. 1003, “Welch Decl.”) in support of its arguments. The parties also rely
`on other exhibits as discussed below.
`F. Asserted Grounds of Unpatentability
` Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claim(s) Challenged 35 U.S.C. §4 Reference(s)/Basis
`1, 115 103(a) Cheok, Foxlin077
`16, 30 103(a) Cheok, Foxlin077, Rallison
`102 103(a) Cheok, Nakamura
`1, 4, 11, 16, 30 103(a) Nakamura, Benini
`102 103(a) Nakamura
`II. ANALYSIS
`A. Principles of Law
` Petitioner bears the burden of persuasion to prove unpatentability of
`the claims challenged in the Petition, 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 patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`
`4 The application that issued as the ’821 patent was filed before the effective
`date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103.
`5 The heading for Ground 1, based on Cheok and Foxlin077, lists dependent
`claim 4 as being challenged, but the corresponding section of the Petition
`lacks a discussion of claim 4. See Pet. 18 (section heading); id. at 37
`(transitioning from independent claim 1 directly to dependent claim 11).
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`6
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) if present, any objective evidence of
`obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`B. The Level of Ordinary Skill in the Art
` In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d
`955, 962 (Fed. Cir. 1986)).
` Petitioner contends that:
` A person of ordinary skill in the art (“POSITA”) in 2004
`would have had at least a bachelor’s degree in electrical
`engineering, computer science, or similar field, with at least two
`years of relevant experience working with VR [Virtual Reality]
`and AR [Augmented Reality] systems. Additional experience
`could substitute for less education, and additional education
`could likewise substitute for less experience. Welch ¶95; see
`also ¶¶94.
`Pet. 17. Patent Owner, at this stage, does not disagree or propose a different
`definition of the person of ordinary skill in the art.
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`7
` Petitioner’s definition is consistent with the level of ordinary skill
`reflected in the prior art references of record. See Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may
`reflect an appropriate level of skill in the art). For purposes of this decision,
`we apply Petitioner’s definition of the person of ordinary skill in the art.
`C. 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)
`(2025). 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). “[W]hile extrinsic evidence can shed
`useful light on the relevant art, . . . it is less significant than the intrinsic
`record in determining the legally operative meaning of claim language.”
`Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe
`expressly only those claim terms that require analysis to determine whether
`to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”).
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`8
` Petitioner, in the Petition, contends that “[t]his Petition establishes the
`prior art meets each of the claim limitations under any reasonable
`construction,” and that “no express construction is required.” Pet. 17–18
`(footnote omitted). Patent Owner proposes a construction of “physical
`playfield” recited in independent claims 1 and 102. Prelim. Resp. 15–17;
`Prelim. Sur-Reply 1–3. Specifically, Patent Owner argues that “physical
`playfield” “should be construed to be a ‘bounded physical play space.’”
`Prelim. Resp. 15. Petitioner, in the authorized reply, contends that “[t]he
`‘bounded’ limitation is unsupported, and it is contradicted by the
`specification which specifically teaches embodiments that are not bounded,”
`and, “[i]f construction is needed, the term encompasses both a defined
`physical playfield and the physical world.” Prelim. Reply 1.
` Patent Owner argues that “[t]he ’821 patent specification consistently
`describes a ‘physical playfield’ as having a boundary.” Prelim. Resp. 15
`(citing Section III.A of the Preliminary Response; Ex. 1001, 6:15–40, 9:11–
`16, 15:51–55, 18:21–28). Patent Owner further argues that “[t]he usage of
`physical dimensions information to scale location-based inputs is reflected in
`Claims 1 and 102, which both recite that ‘said virtual location on said virtual
`playfield corresponds to said physical location on said physical playfield . . .
`[t]hus, within the context of the claims, a ‘physical playfield’ must have
`defined boundaries such that the claimed system can translate virtual
`locations to physical locations.” Id. at 16–17. Patent Owner also cites to
`dictionary definitions of “playing field” and “playfield” that purportedly
`support its proposed construction. Id. at 17 (citing Ex. 2001, 3; Ex. 2002, 3;
`Ex. 2003, 3; Ex. 2004, 3).
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`9
` At this stage, we do not find Patent Owner’s proposed construction
`persuasive for several reasons. As an initial matter, the claim does not recite
`“a bounded physical play space.” Rather, the claim recites “a physical
`playfield.”
` In response to Petitioner’s assertion that the Specification indicates
`that the playfield could be the entire world, Patent Owner argues that the
`Specification contrasts and distinguishes the two. See Prelim. Sur-reply 1–3
`(citing Ex. 1001, 6:7–7:20, 8:8–12, 8:40–45, 19:42–44, Fig. 1). We do not
`agree that the portions of the Specification cited by Patent Owner support its
`position. For example, the Specification states, “[g]enerally, flow chart 200
`may be utilized in a location-based game where the location of a user on a
`defined physical playfield, or that user’s latitude/longitude information in the
`world, is utilized as a control signal to a location-based game.” Ex. 1001,
`8:8–12. This, at most, distinguishes a defined physical playfield from the
`world; it does not indicate that an unbounded world cannot be a playfield.
`And, the drafter’s use of a modifier such as “defined” in the Specification
`but not in independent claim 1 or independent claim 102 suggests the
`intention for the independent claims to be broader. On this preliminary
`record, we decline to read into the claim the requirement that the “physical
`playfield” be limited to a “bounded physical playfield.”
` Additionally, the Specification includes an embodiment associating a
`“virtual video game playfield” with “a ‘perimeterless’ game of pong.” See
`Ex. 1001, 13:57–63. We are not persuaded, at this preliminary stage, by
`Patent Owner’s argument that the Specification’s disclosure of “a
`‘perimeterless’ game of pong” is referring to a playfield having boundaries.
`See Prelim. Sur-reply 3 (“The specification also uses quotations to refer to a
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`10
`‘perimeterless’ game of pong; but even then it has boundaries, albeit larger
`ones (“1,000 feet” wide) . . . .”) (alterations in original; citing Ex. 1001,
`13:57–63). The embodiment is not, as Patent Owner argues, identifying
`1,000 feet as playfield boundaries, but rather that is an example of a distance
`that a player may move, which yields the benefit of a large amount of
`exercise. See Ex. 1001, 13:57–63 (“[A] user may move 1,000 feet to the left
`to block an incoming pong-ball . . . . Such a perimterless [sic] game, or any
`location-based game, may provide great a [sic] large amount of exercise to a
`user.”). Limiting the claim term to only “bounded” playfields would read
`out this broader perimeterless embodiment from the claim scope. Vitronics
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding
`that interpreting a claim to exclude an embodiment disclosed in the written
`description “is rarely, if ever, correct and would require highly persuasive
`evidentiary support, which is wholly absent in this case.”). And, even if
`every embodiment in the Specification disclosed a bounded playfield, that
`does not necessarily justify narrowing the claims by reading in the limiting
`term “bounded.” Phillips, 415 F.3d at 1323 (“[A]lthough the specification
`often describes very specific embodiments of the invention, we have
`repeatedly warned against confining the claims to those embodiments.”).
` We, therefore, agree at this juncture with Petitioner’s claim
`construction analysis, and note that the alleged goal of improving the safety
`in virtual reality gaming does not support Patent Owner’s construction. See
`Prelim. Reply 2 (Petitioner arguing that by describing a location-based game
`where a user can view the physical surroundings, a “bounded” physical
`playfield is not necessary (citing Prelim. Resp. 4–9)). Further, we find
`unpersuasive, at this juncture, Patent Owner’s arguments related to
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`11
`embodiments of how the dimension information about the playfield is used
`to construct the playfield and perform scaling. Prelim. Resp. 16–17. This
`scaling is not recited in the independent claims. But see id. at 16 (Patent
`Owner arguing that “[t]he usage of physical dimensions information to scale
`location-based inputs is reflected in Claims 1 and 102, which both recite that
`‘said virtual location on said virtual playfield corresponds to said physical
`location on said physical playfield.’”).
` Finally, the extrinsic dictionary definitions cited by Patent Owner are
`“less significant than the intrinsic record in determining the legally operative
`meaning of claim language.” Phillips, 415 F.3d at 1317. And in any event,
`we may not rely on dictionary definitions that contradict what the patent
`documents describe. See Advanced Fiber Tech. (AFT) Trust v. J & L Fiber
`Servs., Inc., 674 F.3d 1365, 1374−75 (Fed. Cir. 2012) (holding erroneous a
`construction informed by a dictionary definition but in disagreement with
`one sentence of the written description).
`D. Ground 1: Obviousness Based on Cheok and Foxlin077
` Petitioner asserts that independent claim 1 and dependent claim 11
`would have been obvious over Cheok6 and Foxlin077. See Pet. 18–38. In
`doing so, Petitioner explains how the combination satisfies each claim
`limitation and provides supporting testimony from its expert. See id.
`Because the arguments presented by Patent Owner focus on independent
`claim 1, our analysis likewise focuses on that claim. See, e.g., Prelim.
`Resp. 2–3 (summarizing the arguments for “Claim 1 Grounds.” (emphasis
`omitted)); id. at 25 (“The only challenged dependent claims 4, 11, 16, and 30
`
`6 For Cheok, we, like Petitioner, cite to the page numbers of the underlying
`document rather than the page numbers of the exhibit.
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`12
`all depend from claim 1. . . . Thus, all challenged claims require a ‘physical
`playfield.’”).
` For the reasons that follow, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing at least independent
`claim 1 is unpatentable as obvious over Cheok and Foxlin077.
`1. A physical playfield
` Patent Owner argues that Petitioner fails to show that Cheok discloses
`the recited “physical playfield” because “[t]he Petition never identifies any
`disclosure in Cheok of boundaries in the physical world that would
`constitute a ‘physical playfield’ as required by the challenged claims.”
`Prelim. Resp. 26. According to Patent Owner, “[i]nstead, Cheok teaches
`simply ‘embedding the natural physical world . . . with a fantasy virtual
`playground.’” Id. (citing Ex. 1006, Abstract).
` Patent Owner’s argument is not persuasive as it is premised on the
`proposed claim construction with which we do not agree for the reasons set
`forth above in the claim construction section. See supra Section III.C.
`Petitioner contends that “the user moves through the physical world (on a
`physical playfield).” Pet. 22 (citing Ex. 1006, 108). As Patent Owner notes,
`Cheok refers to “the selected game play area in our university campus.” Id.
`at 27 (citing Ex. 1006, 5 (page 110 of the underlying document)).
` At this stage, and on this record, we determine that Petitioner has
`shown sufficiently for institution that Cheok discloses “a physical playfield,”
`as recited in independent claim 1.
`2. A manually provided direction in response to a prompt
` Limitation 1.a.3 recites, in part, “a direction of gameplay of said
`videogame is operable to be established by recording a manually provided
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`13
`direction in response to a prompt requesting said manually provided
`direction.” Ex. 1001, 24:6–9.
` Petitioner contends that, in Cheok, “[t]he inertial sensor and digital
`compass of the dead-reckoning module . . . help[s] establish a user’s
`direction during gameplay,” and the system “establish[es] the
`direction/orientation of a user’s Ghost or Pacman virtual character based on
`the direction the user is facing on the physical field.” Pet. 28–29 (citing
`Ex. 1006, 108–109 (“By placing the [InertiaCube2] sensor on the cap of
`each player, her head movement and orientation is tracked to high
`accuracy.” (alterations and emphasis by Petitioner)); Welch Decl. ¶144).
`Petitioner asserts that Cheok does not explicitly disclose that the direction of
`gameplay is established “by recording a manually provided direction in
`response to a prompt requesting said manually provided direction,” as
`recited in claim 1. Id. at 29. Petitioner turns to Foxlin077 for that aspect of
`the claim.
` Petitioner contends that “Foxlin077 relates to motion tracking in VR
`and AR applications and discloses an ‘inertial angular orientation tracking
`apparatus’ to track motions of parts of a human body.” Id. at 29 (citing
`Welch Decl. ¶ 146; Ex. 1008, 6:20–22). Petitioner further contends that
`Foxlin077 teaches the initialization of the sensor’s orientation in response to
`a prompt. See id. at 32. In this regard, Petitioner asserts that “[t]he
`initialization steps ‘establish the rest position, from which orientation is
`measured and measure biases for the rate sensors,’” and “[a] ‘user is
`instructed 432 to place the sensor assembly in such a position by a message
`delivered to the apparatus input/output devices or implicitly by the fact of
`starting the tracker.’” Id. (citing Ex. 1008, 9:67–10:7, 10:29–35; Welch
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`14
`Decl. ¶ 150). Petitioner further contends that both Cheok and Foxlin077
`involve the InertiaCube2 inertial sensor and that:
`Because Cheok discloses tracking movement with respect to an
`“initialization” point, Cheok suggests that the sensors must be
`initialized prior to use. However, Cheok does not specifically
`disclose any particular initialization processes for the inertial
`sensors. A POSITA would have thus found it beneficial to
`modify Cheok with Foxlin077’s inertial sensor initialization/
`reinitialization that allows a user to manually set an orientation
`in response to a prompt.
`Id. at 34–35 (citing Ex. 1006, 109, 116; Ex. 1013, 2; Welch Decl. ¶¶ 154–
`155).
` Patent Owner argues that Foxlin077 “does not describe or suggest any
`application of the sensor for a video game,” and “[t]herefore, Foxlin077
`does not establish anything about a game, much less a direction of
`gameplay.” Prelim. Resp. 34. Even if Patent Owner’s characterization is
`correct, we do not find this argument persuasive. “Non-obviousness cannot
`be established by attacking references individually where the rejection is
`based upon the teachings of a combination of references.” In re Merck &
`Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,
`425 (CCPA 1981)). Petitioner contends that Cheok discloses a direction of
`gameplay. See, e.g., Pet. 28–29.
` Patent Owner appears to agree that the proposed combination would
`improve Cheok, asserting that “Foxlin077’s initialization process only
`provides for more accurate movement detection of that very same movement
`in Cheok, by providing an initial configuration step to better measure
`physical movement.” Prelim. Resp. 34; see id. (Patent Owner asserting that
`Foxlin077’s “initialization steps merely provide better physical
`measurement”). Patent Owner argues, however, that “[e]ven if Foxlin077’s
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`15
`initialization process was implemented in Cheok, it would not cause Cheok
`to establish a direction of gameplay with manual input,” and “even in the
`combination, the establishment of a ‘direction of gameplay’, under
`Petitioner’s theory, is still done via movement of the user as he or she is
`playing the game, rather than by recording a manually provided direction in
`response to a prompt.” Id. at 34.
` At this preliminary stage of the proceeding, we do not find Patent
`Owner’s argument persuasive. We understand Petitioner to contend that the
`proposed combination utilizes Foxlin077’s initialization process, involving a
`manual input in response to a prompt, to set the orientation of Cheok’s
`sensor at the beginning of gameplay and when there is a need to “adjust and
`then restore the direction of gameplay.” Pet. 36 (citing Welch Decl. ¶ 158);
`see also id. at 35 (“A POSITA would have . . . found it beneficial to modify
`Cheok with Foxlin077’s inertial sensor initialization/reinitialization that
`allows a user to manually set an orientation in response to a prompt.”).
`Patent Owner does not explain adequately how this is excluded from the
`claim’s recitation that “a direction of gameplay of said videogame is
`operable to be established by recording a manually provided direction in
`response to a prompt requesting said manually provided direction.”
` Patent Owner next argues that “Foxlin077’s baseline position—which
`is the alleged ‘manually provided direction’—is not manually provided.”
`Prelim. Resp. 35. Patent Owner argues that the system provides the
`direction and, therefore, it is not manually provided by the user. See id. We
`do not find these arguments persuasive at this preliminary stage. Even if the
`Foxlin077 user’s manual positioning of the sensor is not manually providing
`a direction within the meaning of the claim language, we understand
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`16
`Petitioner’s proposed combination with Cheok to involve the user manually
`setting an initial position. See, e.g., Pet. 32 (“A POSITA would have
`understood that in such a process [as Foxlin077’s], the user is establishing a
`reference orientation (a direction of gameplay of said videogame is operable
`to be established) by providing a manual orientation (e.g., by holding the
`sensor assembly stationary in a certain direction) (by recording a manually
`provided direction) in response to a message delivered to the apparatus (in
`response to a prompt requesting said manually provided direction).”).
` Patent Owner next argues that there is no motivation to combine the
`references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically
`argues that “[t]here is no motivation to modify Cheok’s method for allegedly
`determining the direction of gameplay to include a prompt requesting a
`manually provided direction; it already allegedly determines direction by the
`user’s simple movement, which the user will already do while playing the
`game, a much more efficient process.” Id. at 36 (citing Pet., 29–36).
`According to Patent Owner, “[a]dding a prompt requesting manual user
`input for a direction of gameplay has drawbacks to user experience; it slows
`down the beginning of gameplay and complicates the overall system,
`removing the natural feel of playing without having to set up the game,
`when Cheok already works for its intended purpose.” Id. at 36–37. We do
`not find these arguments persuasive at this stage. Even if Patent Owner is
`correct that the proposed combination would be less efficient or slow down
`the beginning of play, that there may be drawbacks from the proffered
`combination of teachings does not necessarily show a lack of motivation to
`combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
`1349 (Fed. Cir. 2000). And, even if the proposed combination would not
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`17
`have been the best choice, that does not necessarily mean that it was
`non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir.
`2021) (“It’s not necessary to show that a combination is ‘the best option,
`only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI
`Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch
`testifies, for example, that “[a] POSITA would have . . . recognized it would
`be beneficial to improve the Cheok system by implementing a similar
`inertial sensor initialization/reinitialization process [as in Foxlin077] to
`address any potential accuracy or user experience issues associated with
`drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual
`environment application like the Cheok system, in which a user must
`interact with the real environment, a POSITA would have understood that
`Foxlin077’s manual reinitialization process would be beneficial to address
`accumulated drift when an automatic drift compensator component is not
`sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is
`unrebutted with evidence, as opposed to mere attorney argument.
` Patent Owner also argues that “[t]he Petition’s rationale regarding
`‘drift’ and sensor accuracy likewise does not establish a reason to prompt the
`user a manually provided direction,” and asserts that “Cheok does not have
`an accuracy problem.” Prelim. Resp. 37 (citing Pet. 35). However, Patent
`Owner concedes that “Foxlin077’s initialization process . . . provides for
`more accurate movement detection of that very same movement in Cheok,
`by providing an initial configuration step to better measure physical
`movement.” Prelim. Resp. 34; see also id. (“[E]ven if Foxlin077 is or could
`be used in conjunction with a game, its initialization steps merely provide
`better physical measurement.”).
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`18
` We determine that Petitioner has shown adequately for purposes of
`institution that a person of ordinary skill in the art would have had a
`motivation to make the proposed combination and that the proposed
`combination would result in the claimed subject matter.
`3. A virtual character displayed on a display
` Limitation 1.a.1 recites a display, and limitation 1.a.3 recites, in part:
`“a processor coupled to said display . . . , wherein said processor is operable
`to provide a video game comprising a virtual character . . . , said virtual
`character is displayed on said display.” Ex. 1001, 23:66–24:3.
` Patent Owner argues that “the Petition . . . points to two different
`things for ‘a display’ and ‘said display.’” Prelim. Resp. 44. Patent Owner
`asserts that Petitioner maps Cheok’s head-mounted display (HMD) worn by
`the Pac-Man player as “a display,” but maps the computer used by the helper
`to “said display” on which the virtual character appears. See id. at 44–45.
`Patent Owner appears to argue that the virtual characters appear in the
`virtual “Pac-World View” that only can be viewed on the helper’s computer,
`and not on the head-mounted display. See id.
` We do not find Patent Owner’s argument persuasive. We understand
`Petitioner to consistently map the recited “display” to the head-mounted
`display. For limitation 1.a.1, Petitioner contends that the Cy-Visor Head
`Mounted Display is the recited “device having a display.” Pet. 20.
`Petitioner contends that Pacmen and Ghosts are “virtual character[s]” and
`Pac-World is the recited “virtual playfield.” Pet. 25 (citing Ex. 1006, 110;
`Welch Decl. ¶ 140). For limitation 1.a.3, Petitioner contends that “a player’s
`virtual character (e.g., a Pacman) is displayed on said display of the HMD
`in the virtual world (i.e., Pac-world) view.” Id. at 26 (citing Ex. 1006,
`Fig. 10; Welch Decl. ¶ 142). Thus, for both pertinent limitations, Petitioner
`
`
`
`
`
`
`
`IPR2025-00703
`Patent 11,033,821 B2
`
`19
`contends that the head-mounted display is the recited display, and contends
`that is where the virtual character is displayed.
` Petitioner additionally contends that “[t]he wearable computer [of
`Cheok] also incorporates a HMD which enables users to switch between AR
`and VR modes.” Pet. 6 (citing Ex. 1006, Fig. 11; Welch Decl. ¶ 101).
`Petitioner’s contention is consistent with Cheok’s disclosure, which
`explains:
` Pac-World is a fantasy world existing dualistically in
`both Augmented Reality (AR) and Virtual Reality (VR) mode.
`Pacmen and Ghosts, who are walking around in the real world
`with their networked wearable computers and head mounted
`displays (HMD), are allowed to switch between the two viewing
`mode. Helpers, on the other hand, can only view in