Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 10
`Date: November 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`Case PGR2020-00063
`Patent 10,406,432 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 10
`Date: November 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`Case PGR2020-00063
`Patent 10,406,432 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`PGR2020-00063
`Patent 10,406,432 B2
`
`
`INTRODUCTION
`I.
`GREE, Inc. (“GREE”) is the owner of U.S. Patent No. 10,406,432 B2
`(“the ’432 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`post-grant review of claims 1–9 of the ’432 patent. Paper 2 (“Pet.”). GREE,
`in turn, filed a preliminary response. Paper 8 (“Prelim. Resp.”). After
`considering the petition and the preliminary response, as well as all
`supporting evidence, we determine the petition does not demonstrate that it
`is more likely than not that at least one of the challenged claims of the ’432
`patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-
`grant review of claims 1–9 of the ’432 patent.
`B. Related Proceedings
`Petitioner indicates that there are no related matters involving the ’432
`patent. Pet. 1. Patent Owner does not contest this assertion.
`C. The ’432 Patent
`The ’432 patent is directed to “a virtual image display program, a
`virtual image display apparatus, and a virtual image display method capable
`of providing information while reducing the loss of a sense of immersion in
`[the] virtual space.” Ex. 1001, 1:43–46. Reduction of the loss of a sense of
`immersion in the virtual space is achieved by eliminating the “need to
`display a button for executing information provision on an image of the
`virtual space.” Id. at 2:1–3.
`The ’432 patent provides “a virtual image display program for
`displaying an image of virtual space on a display that displays an image by
`using a virtual image display apparatus, a detector for identifying a position
`and direction of a certain body part of a player, and the display.” Ex. 1001,
`1:48–52. The ’432 patent identifies the certain body part of the player as
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`either the head or eyes of the player. Id. at 3:55–57, 60–62. The virtual
`image display apparatus includes “a controller and a storage unit where an
`information providing condition and to-be-provided information is
`recorded.” Id. at 1:53–55. The virtual image display program causes “the
`controller to function as a space image output unit and an information
`provider.” Id. at 1:56–57. The space image output unit displays “the image
`of the virtual space on the display in accordance with the position and
`direction of the certain body part of the player.” Id. at 1:58–60. The
`information provider outputs “the to-be-provided information when the
`information providing condition regarding the position and direction of the
`certain body part of the player is satisfied.” Id. at 1:61–63.
`The virtual display program uses the gaze position of the player. See,
`e.g. Ex. 1001, 2:6–8. The gaze position of the player is “identified from the
`position and direction of the certain body part of the player.” Id. at 2:10–11.
`Such identification is determined by gaze identifying unit 24 which
`identifies “a gaze position Pl of the player 101 in the virtual space, on the
`basis of the calculated position and direction of the head” or by detecting the
`eyeball movement or light reflected from the interior of the iris of player
`101. Id. at 6: 32–34, 45–46.
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`Figure 5, reproduced below, shows the virtual space displayed to the
`
`user.
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`
`
`Figure 5 is “a schematic diagram illustrating an exemplary embodiment of
`an image that may be displayed on a virtual image display.” Ex. 1001, 3:19–
`21. The virtual space shown in Figure 5 includes virtual space image 110
`including gameable area 105 (corresponding to the claimed first area) in the
`shape of a rectangle that covers most of virtual space image 110 surrounded
`by an area outside of gameable area 105 (corresponding to the claimed
`second area). Virtual space image 110 includes target objects 103 inside
`gameable space 105 and other objects 106 which appear in both gameable
`space 105 and the area outside of gameable space 105. It also includes
`moving body 112 (not labeled in this figure) “which may appear as a bird
`moving outside the gameable area 105.” Id. at 9:26–27.
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`In the claimed embodiment, the information providing condition is
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`satisfied when the user’s gaze position moves to the second area from the
`first area. Ex. 1001, 16:62–64. When the information providing condition is
`satisfied, the to-be-provided information is displayed in the second area. Id
`at 16:59–61.
`
`Representative Claim
`D.
`The ’432 patent includes nine claims, of which claims 1, 8, and 9 are
`independent. All three independent claims recite similar limitations and
`vary only as to type, where claim 1 is directed to a “computer program
`product . . . executable by a virtual display apparatus,” claim 8 to a “virtual
`image display apparatus,” and claim 9 to a “virtual image display method.”
`Ex. 1001, 16:31–33, 17:61, 18:31. Representative claim 1 is reproduced
`below:
`1. A computer program product embodied on a non-transitory
`computer-readable medium, comprising code executable by a
`virtual image display apparatus having at least a processor and a
`memory, the memory being configured to store an information
`providing condition of the virtual image display apparatus and
`being further configured to store to-be-provided information, to
`cause the virtual image display apparatus to carry out the
`following steps:
`detecting, with a sensor operationally linked to the virtual
`image display apparatus, a movement of a body part of a player,
`the body part comprising at least one of a head of the player and
`an eye of the player, and the sensor being at least one of the set
`of: a gyro sensor configured to measure movement of the head
`of the player, an acceleration sensor configured to measure
`movement of the head of the player, a geomagnetic sensor
`configured to measure movement of the head of the player and a
`line-of-sight sensor configured to measure movement of the eye
`of the player; and
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`determining, based on the movement of the body part of
`the player, a position and direction of the body part of a player;
`displaying, on a display operationally linked to the virtual
`image display apparatus, in accordance with the position and
`direction of the body part of the player, an image of a virtual
`space including a first area and a second area; and
`with the virtual image display apparatus, providing, when
`the information providing condition is satisfied, the to-be-
`provided information to the player by displaying the to-be-
`provided information in the second area;
`wherein the information providing condition is a condition
`of a gaze position moving to the second area from the first area,
`the gaze position being specified by at least one of the body part
`of the player being in a specified position or the direction of the
`body part of the player being at least a specified direction.
`Ex. 1001, 16:31–67.
`Prior Art and Asserted Grounds
`E.
`Petitioner asserts that claims 1–9 are unpatentable based on the
`following grounds.
`Claim(s) Challenged 35 U.S.C. §
`1–9
`101
`1–9
`112(a)
`1, 2, 4, 5, 8, 9
`102(b)
`3
`103(a)
`3
`103(a)
`6
`103(a)
`
`Reference(s)/Basis
`Ineligible Subject Matter
`Inadequate Written Description
`Ross1
`Ross
`Ross, Lankford2
`Ross, Rimon3
`
`
`1 US 9,392,212 B1, issued July 12, 2016 (Ex. 1004, “Ross”).
`2 “Eye Tracking Research & Applications Symposium 2000” (Ex. 1005,
`“Lankford”).
`3 US 2016/0093105 A1, published Mar. 31, 2016 (Ex. 1006, “Rimon”).
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`Claim(s) Challenged 35 U.S.C. §
`7
`103(a)
`1, 2, 4, 5, 8, 9
`102(b)
`3
`103(a)
`6
`103(a)
`7
`103(a)
`
`Reference(s)/Basis
`Ross, ObjectLabel4
`Ballard5
`Ballard, Lankford
`Ballard, Rimon
`Ballard, ObjectLabel
`
`Petitioner relies on the Declaration of Joseph J. LaViola, Ph.D. (Ex.
`1003). In its response, Patent Owner relies on the Declaration of Michael
`Shamos, Ph.D., J.D. (Ex. 2001).
`III. ANALYSIS
`A. Discretion Under 35 U.S.C. § 325(d)
`1. Principles of Law
`Section 325(d) provides that the Director may elect not to institute a
`proceeding if the challenge to the patent is based on matters previously
`presented to the Office. As stated in 35 U.S.C. § 325(d), in pertinent part:
`In determining whether to institute or order a
`proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account
`whether, and reject the petition or request because,
`the same or substantially the same prior art or
`arguments previously were presented to the Office.
`The Board recently explained a two-part framework that the Board
`uses under § 325(d):
`(1) whether the same or substantially the same art
`previously was presented to the Office or whether the same or
`
`
`4 “ObjectLabel” (Ex. 1007, “ObjectLabel”).
`5 US 2015/0153913 A1, issued June 4, 2015 (Ex. 1008, “Ballard”).
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`substantially the same arguments previously were presented to
`the Office; and
`(2) if either condition of first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The
`Board further explained that “[i]f a condition in the first part of the
`framework is satisfied and the petitioner fails to make a showing of material
`error, the Director generally will exercise discretion not to institute.” Id. at
`8–9. “If reasonable minds can disagree regarding the purported treatment of
`the art or arguments, it cannot be said that the Office erred in a manner
`material to patentability.” Id. at 9. The Becton, Dickinson6 factors, which
`address discretion to deny when a Petition presents the same or substantially
`the same prior art or arguments previously presented to the Office, are
`instructive. Id. (“[T]he Becton, Dickinson factors provide useful insight into
`how to apply the framework under 35 U.S.C. § 325(d).” (Footnote omitted)).
`In this case, the ground of unpatentability relevant to
`the § 325(d) inquiry is not based on prior art. Rather, it is based on
`unpatentability of the challenged claims under 35 U.S.C. § 101. Thus, an
`issue relevant to this case is whether the arguments presented in the Petition
`as to unpatentability of the challenged claims under 35 U.S.C. § 101 are the
`same or substantially the same arguments previously presented to the
`
`
`6 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)
`(“Becton, Dickinson”).
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`Office. See Becton, Dickinson, IPR2017-01586, Paper 8 at 17–18
`(identifying factors that compare a petition’s arguments with issues and
`arguments raised in the prosecution history). To answer this question, we
`compare the issues addressed by the Office during examination in this case
`with the arguments presented in the Petition.
`2. Prosecution History of the ’432 Patent
`During prosecution of the ’432 patent, the Examiner rejected the
`original claims under 35 U.S.C. § 101. Ex. 1002, 71–76. Specifically, the
`Examiner determined that original claims 1–9 were directed to “the abstract
`idea of conducting a game by collecting, analyzing and displaying games
`data.” Id. at 72. Having determined that original claims 1–9 were directed
`to an abstract idea, the Examiner analyzed them “to determine whether there
`were additional limitations recited that amount to significantly more than the
`abstract idea.” Id. The Examiner determined that there were additional
`limitations, but that the additional limitations were directed to “computer
`components [that were] generically claimed to enable the management of the
`game by performing the basic functions of: (i) receiving, processing, and
`storing data.” Id. According to the Examiner “[a]dding hardware that
`performs ‘well understood, routine, conventional activit[ies]’ previously
`known to the industry’ will not make claims patent-eligible.” Id. at 72–73
`(citing In re TLI Communications, 823 F.3d 607, 612 (Fed. Cir. 2016)). The
`Examiner also determined that original claims 1–9 do not “recite a
`technological solution to a technological problem” and that “[t]aking the
`additional elements individually and in combination, the additional
`limitations of [original] Claims 1 to 9 do not add significantly more because
`they are simply an attempt to limit the abstract idea to a particular
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`technological environment.” Id. at 73–75. In accordance with these
`determinations, the Examiner rejected original claims 1–9 as not being
`directed to patent-eligible subject matter. Id. at 76.
`In response to this rejection, Patent Owner amended claims 1–9 to
`overcome the rejection under § 101 and presented extensive arguments
`explaining how the proposed amendments rendered amended claims 1–9
`patent-eligible. Ex. 1002, 30–53. In response the Examiner issued a Notice
`of Allowability. Id. at 11. The Notice of Allowability included an
`Examiner’s Reasons for Allowance. Id. at 12. In the Reasons for
`Allowance, the Examiner explicitly stated that “[c]laims 1 to 9 have been
`reviewed and found to not be directed towards an abstract idea under [2019
`Revised Subject Matter Eligibility Guidance] [(“]2019 PEG[”)]. Claims 1 to
`9 do not recite mathematical concepts, mental processes or certain methods
`of organizing human activity as outlined in the 2019 PEG.” Id. The
`Examiner also stated that even if these claims were directed to patent-
`ineligible subject matter, they “recite additional elements which would apply
`or use the judicial exception in some other meaningful way beyond generally
`linking the use of the judicial exception to a particular technological
`environment (i.e., integrate the abstract idea into a practical application
`under 2019 PEG).” Id.
`3. Arguments Presented in the Petition
`In the Petition, Petitioner asserts that the 2019 PEG was not addressed
`during prosecution. Pet. 24. “A Notice of Allowance issued on May 2,
`2019 with Reasons for Allowance which merely provided a conclusory
`statement that the claims were patent eligible under the 2019 PEG.” Id.
`According to Petitioner, “[t]he Reasons for Allowance were devoid of any
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`analysis as how the claims ‘integrate the abstract idea into a practical
`application.’” Id. (citing Ex. 1002, p. 12). Petitioner asserts further that
`“[h]ad a proper analysis under the 2019 PEG framework as described above
`been undertaken, it is more likely than not a Notice of Allowance would not
`have issued.” Id. at 24–25.
`4. Patent Owner’s Response
`Patent Owner contends Petitioner “fails to demonstrate (1) that its
`§ 101 arguments are not substantially the same as those already considered
`by the Office and (2) that the Office erred.” Prelim. Resp. 21. Patent Owner
`provides a table comparing Petitioner’s arguments to those considered by the
`Office. Id. at 23. Patent Owner contends further that even though “[t]he
`second prong of Step 2A need not even be reached given the absence of an
`abstract idea,” the Office considered whether the claims recited additional
`elements that integrate the abstract idea into a practical application. Id. at
`24. In addition, Patent Owner contends that “[i]n the first Office Action, the
`Examiner expressly considered cases cited by Petitioner” and “under Step
`2B, the Office considered whether the Claims provide an ‘inventive
`concept.’” Id. (comparing Pet. 38 with Ex. 1002, 12).
`Regarding Office error, Patent Owner contends that Petitioner fails to
`demonstrate that the Office erred. Prelim. Resp. 25. According to Patent
`Owner, “Petitioner only generically alleges that the Office did not perform a
`‘proper analysis’ under the 2019 PEG, even though the Examiner
`specifically referenced doing so in the Notice of Allowance.” Id.
`(comparing Pet. 24 with Ex. 1002, 12). Patent Owner notes that “Petitioner
`also disagrees with arguments that Patent Owner made during prosecution,”
`but “Petitioner does not assert that the Office erred because the Office never
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`accepted Patent Owner’s reasoning as its own.” Id. (citing Pet. 34–37;
`Ex. 1002, 12).
`In addition, Patent Owner contends that “Petitioner has not presented
`any ‘additional evidence [or] facts’ to support that the previously considered
`§ 101 arguments warrant reconsideration” per the last relevant Becton,
`Dickinson factor (i.e. whether additional evidence or facts presented in the
`petition warrant reconsideration). Prelim. Resp. 26. According to Patent
`Owner, “Petitioner has only made pure attorney arguments.” Id.
`5. Whether the Same or Substantially the Same Arguments were
`Presented to the Office
`On the record before us, we agree with Patent Owner that the Petition
`raises substantially the same arguments as were presented to the Office.
`Although, the 2019 PEG issued after the first Office Action, the Examiner
`clearly considered the relevant case law in the Non-Final Office Action and
`in the Interview conducted on Monday October 22, 2018. Ex. 1002, 71–76,
`62–68. Further, the Examiner gave clear indication in the Reasons for
`Allowance that the same arguments were considered. Id. at 12.
`6. Conclusion
`For these reasons, we do not institute review of claims 1–9 under 35
`U.S.C. § 101 because, under 35 U.S.C. § 325(d), the same or substantially
`the same arguments previously were presented to the Office, and Petitioner
`has not shown that the Office erred in a manner material to patentability.
`
`B. Written Description Requirement
`
`Petitioner contends that claims 1–9 do not comply with the written
`description requirement. Pet. 41–45. Specifically, Petitioner contends that
`“the specification of the ’432 patent fails to provide adequate written
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`description of ‘first area’ and ‘second area’ as recited in the claims” and that
`the Specification “fails to provide adequate written description of
`determining a ‘position and direction’, ‘reference range’, and
`‘“predetermined movement’ of the ‘body part of the player.’” Pet. 42–43.
`Patent Owner disagrees. Prelim. Resp. 11–16.
`1. First Area and Second Area
`Petitioner asserts that “[t]he claims recite a ‘first area’ and a ‘second
`area,’ but these are never disclosed in the specification, and these terms were
`not part of the originally filed claims.” Pet. 42 (citing Ex. 1002, 246–51).
`According to Petitioner, “the specification only describes ‘when the gaze
`position is moved to a position outside the gameable area 105, an
`information provision display 111 may be output.’” Id. at 42–43 (citing
`Ex. 1001, 9:6–8). Petitioner asserts further that “while the specification
`describes a single gameable ‘area’ and a single ‘position,’ the claims [do
`not] recite two ‘areas.’” Id. Based on these assertions, Petitioner argues that
`“[a] one dimensional ‘position’ is not the same as a two dimensional ‘area.’”
`Id.
`
`Patent Owner responds that Petitioner’s argument is baseless because
`‘“the disclosure as originally filed does not have to provide in haec verba
`support for the claimed subject matter at issue.’” Prelim. Resp. 11 (citing
`Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
`“Rather, ‘the test for sufficiency is whether the disclosure of the application
`relied upon reasonably conveys to those skilled in the art that the inventor
`had ‘possession’ of the claimed subject matter as of the filing date.’” Id.
`(citing Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`2010) (en banc)).
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`Turning to Petitioner’s specific assertions, Patent Owner argues that
`“the virtual space has two areas—‘an area including the target object’ and
`another area ‘outside the area [that has the target object].’” Prelim. Resp. 12
`(citing Ex. 1001, 2:6–18; Ex. 2001 ¶¶ 57–62, 80). In support, Patent Owner
`directs our attention to Figure 5 as showing “a virtual space that includes a
`first area, i.e. ‘a gameable area 105’ that includes ‘target objects 103,’ and a
`second area, i.e. the area ‘outside the gameable 105’ that includes ‘a moving
`body 112, which may appear as a bird.’” Id. at 12–13 (Ex. 1001, 9:1–29;
`Ex 2001 ¶¶ 57–62, 80).
`Patent Owner’s characterization of the relevant law is correct.
`Moreover, we agree with Patent Owner that the Specification provides
`sufficient disclosure to reasonably convey to those skilled in the art that
`Patent Owner had possession of first and second areas as claimed.
`Thus, Petitioner has failed to demonstrate a likelihood of prevailing
`with respect to this challenge.
`2. Position and Direction, Reference Range, and Predetermined
`Movement of the Body Part of the Player
`Petitioner asserts that “the specification is silent on how the position
`and direction of the other body parts of a player (e.g., legs, chest, hands, etc.)
`would be determined.” Pet. 44. Thus, according to Petitioner, “the claims
`are improperly broad in covering the genus of ‘body part.’” Id.
`Patent Owner responds that the claim terms at issue appear “in the
`Claims as originally filed” and the originally filed claims provide written
`description support for these terms. Prelim. Resp. 14. Patent Owner notes
`that “Petitioner does not dispute that the head and eyes are body parts” or
`that the Specification provides support for these body parts. Id. With this in
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`mind, Patent Owner argues that “[t]he teaching examples of the specification
`are not limited to a specific body part,” and “[t]herefore, support exists for a
`‘position and direction’ and a ‘body part.” Id. at 14–15. For similar reasons,
`Patent Owner asserts that the Specification, including the originally filed
`claims, provide support for “reference range,” and “predetermined
`movement” of a “body part.” Id. at 15–16.
`Patent Owner is correct that the claims as originally filed can provide
`written description support of claim terms. There is a presumption that an
`adequate written description of the claimed invention is present when the
`application is filed. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
`Presence of the claim terms in the original claims does not, however, end the
`written description inquiry. In this case, however, it is dispositive because
`each of the independent claims defines the claims “body part” as “one of the
`head of the player and an eye of the player” and the fact that the
`Specification provides adequate written description support for the head of
`the player and the eye of the player is not in dispute. Rather, Petitioner
`admits that the Specification provides support for these body parts.
`Thus, Petitioner fails to demonstrate that it is more likely than not that
`it will prevail with respect to this challenge.
`
`C. Anticipation by Ross
`
`Petitioner asserts that Ross anticipates claims 1, 2, 4, 5, 8, and 9.
`Pet. 45–59. Patent Owner disagrees. Prelim. Resp. 46–56.
`1. Claims 1, 8, and 9
`Petitioner addresses claims 1, 8, and 9 together and asserts that Ross
`discloses each and every limitation of these claims. Pet. 46–53. In
`particular, Petitioner asserts that Ross discloses the limitation “wherein the
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`information providing condition is a condition of a gaze position moving to
`the second area from the first area, the gaze position being specified by at
`least one of the body part of the player being in a specified position or the
`direction of the body part of the player being at least a specified direction”
`as required by claims 1, 8, and 9. Pet. 52–53; Ex. 1001, 16:62–67, 18:25–
`30, 58–63.
`Specifically, Petitioner asserts that “Ross discloses wherein the
`information providing condition is a condition of a gaze position moving to
`the second area from the first area” in that, in Ross, the “user may interact
`with the secondary . . . virtual reality content and then return his view back
`to the movie wherein the movie has been adjusted to reflect the user’s
`interaction with the secondary, tertiary, etc., virtual reality content.” Pet. 52.
`According to Petitioner, “while a user views primary virtual reality
`content, system 10 may be configured to display a ‘pop-up’ cue indicating
`that additional virtual reality content . . . is available in a different . . .
`content area.” Id. at 52–53 (citing Ex 1004, 7:41–50; Ex. 1003 ¶ 73). Thus,
`in Ross, “[t]he user moves his view, i.e., his gaze position, from the
`secondary area to the primary area in Ross, after which a pop-up, i.e., a to-
`be-provided information, is shown to the user in the primary area.” Id. at 53.
`Petitioner also notes that “[a]lthough the ordinals for the areas are swapped
`between Ross and the claims, the claimed limitations provide no distinction
`between the first and second areas, and therefore they are interchangeable.”
`Id. In addition, Petitioner asserts that Ross “discloses that the gaze position
`is specified by at least one of the body part of the player being in a specified
`position or the direction of the body part of the player being at least a
`specified direction.” Id.
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`Patent Owner contends that the cited portions of Ross do not support
`Petitioner’s assertions. Prelim. Resp. 48. According to Patent Owner, “Ross
`does not disclose that the ‘pop-up’ cue is displayed in response to the user
`moving his view back to the primary content area from the secondary
`content area or that the ‘pop-up’ cue is displayed in the primary content area,
`as Petitioner contends.” Id. at 49 (emphasis omitted). Rather, according to
`Patent Owner, “Ross merely discloses displaying a ‘pop-up’ to indicate that
`additional content is available . . . or to ‘facilitate communication via chat
`applications that utilize pop-up windows.’” Id. (citing Ex. 1004, 7:45–50,
`17:35–41). Patent Owner contends that “[i]n fact, Ross discloses displaying
`the ‘pop-up’ cue ‘while a user views primary virtual reality content’” such
`that “[n]o rational reading of this citation leads to the conclusion that the
`disclosed system displays the ‘pop-up’ cue in response to the user changing
`the direction of her gaze from one content area to another.” Id. at 49–50
`(citing Ex. 1004, 7:46–48; Ex. 2001 ¶¶ 106–108).
`In reference to its “pop-up” cue, Ross describes virtual reality content
`(the example of a movie is used) displayed to a user as appearing in a first
`field of view. Ross, 7:11–21. Ross describes “secondary, tertiary, etc.”
`virtual reality content that may be presented to the user when a condition is
`met. See id. at 7:29–33. Ross indicates that this content “may be
`determined by system 10 based on the user’s progression through the movie
`(e.g., as characters are introduced in the movie they may be added to the
`secondary, tertiary, etc., virtual reality content)” or “based on a user’s
`interaction with the movie (e.g., a user may repeatedly look over to a
`particular character in the movie which the user is then able to interact with
`as secondary, tertiary, etc., virtual reality content), and/or based on other
`
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`PGR2020-00063
`Patent 10,406,432 B2
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`information.” Id. at 7:34–41. In particular, Ross explains that “[t]he user
`may interact with the secondary, tertiary, etc., virtual reality content and then
`return his view back to the movie wherein the movie has been adjusted to
`reflect the user’s interaction with the secondary, tertiary, etc., virtual reality
`content.” Id. at 7:41–45. Ross explains further that “while a user views
`primary virtual reality content, system 10 may be configured to display a
`‘pop-up’ cue indicating that additional virtual reality content (e.g., additional
`characters) is available in a different (e.g., secondary, tertiary, etc.) content
`area.” Id. at 7:46–50.
`Thus, we understand Ross to disclose a system wherein a user can
`turn their gaze from a primary area to a secondary, tertiary, etc., area to view
`content related to the content in the primary area. See Ross, 7:21–33
`(“Responsive to the user turning his view from the primary virtual reality
`content . . . a sensory cue comprising . . . secondary, tertiary, etc., . . . may be
`displayed to the user.”). Further, we understand Ross to disclose a system
`wherein the user’s focus on an item in the primary area may activate a “pop-
`up” cue in the primary area directing the user to additional virtual reality
`content in a secondary, tertiary, etc., area. See id. at 7:46–50 (“[W]hile a
`user views primary virtual reality content, system 10 may be configured to
`display a ‘pop-up’ cue indicating that additional virtual reality content . . . is
`available in a different (e.g., secondary, tertiary, etc.) content area.”). We do
`not, however, understand Ross’ “pop-up” cue to be activated in a secondary,
`tertiary, etc. area based on the user’s gaze position moving to the second
`area from the first area as required by claims 1, 8, and 9. See id.
`Therefore, because Ross describes displaying a “pop-up” cue while a
`user is viewing primary virtual reality content (see Ross, 7:46–50),
`
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`PGR2020-00063
`Patent 10,406,432 B2
`
`Petitioner does not show persuasively that Ross discloses that “a gaze
`position moving to the second area from the first area” is an “information
`providing condition.” Furthermore, Petitioner’s cited testimonial evidence
`does not explain sufficiently how Ross discloses the recited “information
`providing condition.” See Ex. 1003 ¶ 73. For the reasons above, Petitioner
`does not show adequately that Ross discloses an “information providing
`condition [that] is a condition of a gaze position moving to the second area
`from the first area.”
`2. Claims 2, 4, and 5
`Petitioner asserts that Ross anticipates claims 2, 4, and 5. Pet. 54–59.
`As these claims depend from claim 1, the deficiencies discussed above apply
`to the challenge as it pertains to claims 2, 4, and 5. Petitioner’s challenge to
`the dependent claims does not cure these deficiencies.
`3. Conclusion
`Petitioner fails to demonstrate that it is more likely than not that
`claims 1, 2, 4, 5, 8, and 9 are anticipated.
`
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`PGR2020-00063
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`D. Obviousness Based on Ross,
`Ross and Lankford,
`Ross and Rimon, and
`Ross and ObjectLabel
`Claims 3, 6, and 7 depend from claim 1. The proposed rejection of
`claim 3 as unpatentable over Ross, the proposed rejection of claim 3 as
`unpatentable over Ross and Lankford, the proposed rejection of claim 6
`based on Ross and Rimon, and the proposed rejection of claim 7 based on
`Ross and ObjectLabel, all suffer from the same deficiencies as the proposed
`rejection of claim 1 discussed in Section III.B above. Pet. 59–68.
`Petitioner’s challenge to the dependent claims does not cure these
`deficiencies. Accordingly, Petitioner fails to demonstrate that it is more
`likely than not that claims 3, 6, and 7 are unpatentable.
`
`E. Anticipation by Ballard
`
`Petitioner asserts that Ballard anticipates claims 1, 2, 4, 5, 8, and 9.
`Pet. 69–74. Patent Owner disagrees. Prelim. Resp. 56–62.
`1. Claims 1, 8, and 9
`Petitioner addresses claims 1, 8, and 9 together and asserts that
`Ballard discloses each and every limitation of these claims. Pet. 69–74. In
`particular, Petitioner asserts that Ballard discloses “displaying, on a display
`operationally linked to the virtual image display apparatus, in accordance
`with the position and direction of the body part of the player, an image of a
`vir
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