Gree, Inc.

Patent Trials and Appeals Board

Nov 12, 2020

PGR2020-00063 (P.T.A.B. Nov. 12, 2020)

Trials@uspto.gov Paper 10
571-272-7822 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)

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I. INTRODUCTION
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.

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
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.
D. Representative Claim
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.
E. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–9 are unpatentable based on the
following grounds.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–9 101 Ineligible Subject Matter
1–9 112(a) Inadequate Written Description
1, 2, 4, 5, 8, 9 102(b) Ross1
3 103(a) Ross
3 103(a) Ross, Lankford2
6 103(a) 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. § Reference(s)/Basis
7 103(a) Ross, ObjectLabel4
1, 2, 4, 5, 8, 9 102(b) Ballard5
3 103(a) Ballard, Lankford
6 103(a) Ballard, Rimon
7 103(a) 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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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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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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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
virtual space including a first area and a second area” as required by claim 1.
Pet. 72–73; Ex. 1001, 16:52–57. Petitioner also asserts that Ballard
discloses the similar processor limitations in claims 8 and 9. Pet. 72–73;
Ex. 1001, 18:16–20, 49–52.
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Specifically, 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 virtual space. Pet. 72 (citing Ex. 1008 ¶ 6; Ex. 1003 ¶¶ 94–95).
Petitioner asserts further that Ballard “discloses displaying an image of a
virtual space including a first area and a second area.” Id. at 73.
Patent Owner contends that Ballard fails to disclose displaying an
image of a virtual space. See Prelim. Resp. 56. According to Patent Owner,
“Ballard discloses an ‘augmented reality’ (‘AR’) [device] with a ‘virtual
menu’ that presents users with various options,” which is different from an
image of a virtual space. Id. (citing Ex. 1008, Fig. 5A, ¶ 120). Petitioner
contends further that “Ballard does not even disclose a ‘virtual reality’
system that displays ‘an image of a virtual space’—it discloses an
‘augmented reality’ system.” Id. at 58 (citing Ex. 1008, Abstract, ¶¶ 5–6;
Ex. 2001 ¶¶ 116, 118–119). Patent Owner directs our attention to Dr.
Shamos’ testimony [that] “‘augmented reality’ is not a virtual space, but a
computer-generated image superimposed on the viewer’s visual field.’” Id.
With this distinction in mind, Patent Owner argues that “[s]uch an AR
system is in fact designed to be obtrusive and display content overlaid on top
of the user’s visual field of reality—as opposed to a virtual reality system’s
virtual space—thereby reducing the user’s immersion in his visual field,”
thus, according to Patent Owner, “creating the type of problem that the ’432
Patent solves.” Id. (citing Ex. 1001, 1:28–38; Ex. 2001 ¶ 119).
We credit Dr. Stamos’ testimony as it is supported by Ballard’s
disclosure. Ballard “relates generally to an augmented reality device and,
more particularly, to methods and systems for representing and interacting
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with augmented reality content using the augmented reality device.” Ballard
¶ 2 (emphases added). Ballard discloses “an apparatus and methods for
representing and interacting with augmented reality content.” Id. ¶ 5.
Specifically, Ballard discloses “a wearable device [that] provides a virtual
menu to a user.” Id. ¶ 6. Providing a virtual menu to a user of an
augmented reality device does not meet the limitations requiring display of
an image of a virtual space including a first area and a second area as set
forth in claims 1, 8, and 9. Ex. 1001, 16:53–57, 18:16–20, 49-52.
2. Claims 2, 4, and 5
Petitioner asserts that Ballard anticipates claims 2, 4, and 5. Pet. 74–
77. As these claims depend from claim 1, the deficiencies discussed above
apply 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 it will
prevail with respect to this ground of unpatentability with respect to claims
1, 2, 4, 5, 8, and 9.
Obviousness Based
Ballard and Lankford,
Ballard and Rimon, and
Ballard and ObjectLabel
Claims 3, 6, and 7 depend from claim 1. The proposed rejection of
claim 3 as unpatentable over Ballard and Lankford, the proposed rejection of
claim 6 based on Ballard and Rimon, and the proposed rejection of claim 7
based on Ballard and ObjectLabel all suffer from the same deficiencies as
the proposed rejection of claim 1 discussed in Section D above. Pet. 78–81.
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Accordingly, Petitioner fails to demonstrate that it is more likely than
not that these claims are unpatentable.
III. CONCLUSION
Having determined that we should exercise our discretion under
§ 325(d) and not institute post-grant review of claims 1–9 based on
Petitioner’s challenge under § 101, and having determined that Petitioner has
not demonstrated that it is more likely than not that the challenged claims are
unpatentable, we deny institution. Accordingly, the Petition is denied, and
no trial is instituted.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.
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PETITIONER:

Rajiv P. Patel
Jennifer R. Bush
Kecin X. McGann
Michael J. Sachsteder
Guang Y. Zhang
FENWICK & WEST LLP
rpatel@fenwick.com
jbush@fenwick.com
kmcgann@fenwick.com
msacksteder@fenwick.com
gzhang@fenwick.com

PATENT OWNER:

Scott A. McKeown
Keyna Chow
Brendan F. McLaughlin
ROPES & GRAY LLP
scott.mckeown@ropesgray.com
keyna.cjow@ropesgray.com
Brendan.mclaughlin@ropesgray.com