Nant Holdings IP, LLC

Patent Trials and Appeals Board

Dec 9, 2021

IPR2021-01119 (P.T.A.B. Dec. 9, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: December 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NIANTIC, INC.,
Petitioner,
v.
NANT HOLDINGS IP, LLC,
Patent Owner.

IPR2021-01119
Patent 10,664,518 B2

Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
STEPHEN E. BELISLE, Administrative Patent Judges.
GIANNETTI, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. § 42.4

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I. INTRODUCTION
A. Background
Niantic, Inc. (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–9, 11–20, 23–32, and 34–36 (the “challenged claims”) of
U.S. Patent No. 10,664,518 B2 (Ex. 1001, “the ’518 patent”). Paper 2
(“Pet.”). Nant Holdings IP, LLC (“Patent Owner”) filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner
filed a Reply to Patent Owner’s Preliminary Response. Paper 7 (“Prelim.
Reply”).
The Board has authority to determine whether to institute an inter
partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
§ 314(a), we may not authorize an inter partes review unless the information
in the petition and the preliminary response “shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
For the reasons stated below, we determine that Petitioner has not
established a reasonable likelihood that it would prevail with respect to any
challenged claim. We therefore do not institute inter partes review as to any
of the challenged claims of the ’518 patent.
B. Related Proceedings
The parties identify the following district court proceeding concerning
the ’518 patent: NantWorks LLC and Nant Holdings IP, LLC v. Niantic, Inc.,
No. 3:20-cv-06262 (N.D. Cal.). Pet. 1; Paper 4, 1.
C. Real Party-in-Interest
The Petition identifies Niantic, Inc., as the real party-in-interest.
Pet. 1. Patent Owner in its Preliminary Response does not contest this
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identification. Patent Owner identifies Nant Holdings IP, LLC, as the real
party-in-interest. Paper 4, 1.
D. The ’518 Patent
The ’518 patent relates to systems and methods that provide
augmented reality (“AR”) content to one or more user devices based on at
least one of location identification and object recognition. Ex. 1001, 2:15–
18. The user device is auto-populated with AR content objects based on a
location, and the AR content objects are instantiated based on object
recognition within the location. Id. at 2:18–22. AR content objects are data
objects including content that is to be presented via a suitable computing
device (e.g., smartphone, AR goggles, tablet) to generate an augmented-
reality or mixed-reality environment. Id. at 7:16–19. This involves
overlaying the content on real-world imagery (preferably in real-time) via
the computing device, such that the user of the computing device sees a
combination of the real-world imagery with the AR content seamlessly. Id.
at 7:20–23.
Figure 5, reproduced below, illustrates a generation of a tessellated
area map.
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Figure 5 of the ’518 patent is a schematic of AR management engine 530
generating area tile maps 538 and 538T. Id. at 17:57–58. AR management
engine 530 includes, among other things, initial map 518A, view(s) of
interest 532 (e.g., point of view origin data, field of interest data), descriptors
associated with view(s) of interest 533, and AR content object(s) 534. Id. at
17:58–62. Based on area data and optional other data (e.g., signal data), AR
management engine 530 establishes AR experience clusters A, B, C, and D
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within the initial map 518A as a function of the set of AR content objects
534 and the views of interest 532. Id. at 17:62–67.
In the example shown in Figure 5, cluster A includes a first point of
view origin having a first field of interest leading to view A. Id. at 17:67–
18:2. Clusters B, C, and D include other point of view origins having other
corresponding fields of interest and other views including objects of interest.
Id. at 18:13–20. Based at least in part on the AR clusters, area tile maps 538
and 538T (perspective view and top view, respectively) are generated. Id. at
19:36–38. The area tile maps include a plurality of tessellated tiles, regular
or non-regular (e.g., semi-regular, aperiodic), covering at least some of the
area of interest. Id. at 3:36–38, 18:38–40.
Figure 6, reproduced below, illustrates an area tile map based on view
of interest clusters.

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Figure 6 of the ’518 patent is a schematic showing area tile map 600 having
been generated on experience clusters. Id. at 19:25–26. As shown in
Figure 6, a portion of an area of interest is divided into tiles A and B. Id. at
19:26–28. These tiles are generated based on experience clusters established
based on the number of AR content objects associated with each view of
interest in the portion. Id. at 19:28–30. As an example, when a user
navigating the real world of interest gets close enough to a portion
represented by tile A, the user’s device can be auto-populated with the seven
AR content objects bound to view of interest W. Id. at 19:55–60.
E. Illustrative Claims
The ’518 patent has 39 claims, of which claims 1–9, 11–20, 23–32,
and 34–36 are challenged in the Petition. Claims 1 and 34 are independent.
Claim 1 is representative of the claims. Claim 1 recites:1
1. [preamble] A device capable of rendering augmented reality
(AR), the device comprising:
[1[a]] at least one sensor, including a location sensor;
[1[b]] a display;
[1[c]] a non-transitory computer readable memory storing
software instructions; and
[1[d]] at least one processor coupled with the non-transitory
computer readable memory, the at least one sensor, and the
display; and, upon execution of the software instructions, is
configurable to:
[1[d][i]] obtain sensor data from the at least one sensor
wherein the sensor data includes a device location
obtained from the location sensor;

1 Paragraph numbering provided by Petitioner has been added.
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[1[d][ii]] obtain an area of interest via an area database
based on at least the device location within the sensor data;
[1[d][iii]] access an area tile map of the area of interest,
the area tile map represented by a set of tile subareas that
includes one or more tessellated tiles from a tessellated tile
map;
[1[d][iv]] identify a tile subarea from the set of tile
subareas based at least in part on the device location
relative to one or more locations of tile subareas from the
set of tile subareas, wherein the identified tile subarea
covers at least a portion of the area of interest, and wherein
one or more tessellated tiles within the identified tile
subarea are associated with one or more AR content
objects;
[1[d][v]] populate the non-transitory computer readable
memory with at least one of the one or more AR content
objects associated with the one or more tessellated tiles
corresponding with the identified tile subarea; and
[1[d][vi]] render the at least one of the one or more AR
content objects that is associated with the identified tile
subarea on the display based on a view of interest.
Ex. 1001, 26:41–27:8.
F. References and Other Evidence
The Petition relies on the following references:
U.S. Patent App. Pub. No. 2008/0132251 A1 (Ex. 1003, “Altman”).
U.S. Patent App. Pub. No. 2013/0178257 A1 (Ex. 1006, “Langseth”).
U.S. Patent App. Pub. No. 2013/0124563 A1 (Ex. 1004, “CaveLie”).
U.S. Patent App. Pub. No. 2008/0268876 A1 (Ex. 1005, “Gelfand”).
U.S. Patent No. 8,762,047 B2 (Ex. 1007, “Sterkel”).
In addition, Petitioner submits the Declaration of Dr. Michael Zyda
(Ex. 1002, “Zyda Decl.”).
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G. Asserted Grounds of Unpatentability
Petitioner asserts that the challenged claims would have been
unpatentable on the following grounds:
Claims Challenged 35 U.S.C. §2 Reference(s)
1–9, 11–14, 18–20,
23–32, 34–36 103 Altman, Langseth
1–9, 11–14, 18–20,
23–32, 34–36 103 Altman, Langseth, CaveLie
1–9, 11–20, 23–32,
34–36 103
Altman, Langseth, CaveLie,
Gelfand
1–8, 11–14, 18–20,
23, 24, 26–32, 34–36 103 Sterkel
Pet. 4.
II. PRELIMINARY MATTERS
A. Level of Ordinary Skill
Petitioner contends a person of ordinary skill in the art “as of
October 2013 would have possessed at least a Master’s of Science in the
areas of electrical engineering or computer science, with a working
knowledge of augmented reality, mobile mapping, and the associated
technologies; or, alternatively, a Bachelor’s of Science in computer science
with at least two years of experience in the aforementioned areas (or
equivalent degree or experience).” Pet. 7 (citing Zyda Decl. ¶¶ 11–15).
At this stage, Patent Owner does not provide a description of the
person of ordinary skill.

2 Because the application from which the ’518 patent issued was filed after
March 16, 2013, the AIA (“America Invents Act”) version of § 103 applies.
Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
284, 285–88 (2011).
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Petitioner’s definition is consistent with the prior art and patent
specification before us and is supported by credible expert testimony. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself
may reflect an appropriate level of skill). For the purpose of our decision,
we adopt Petitioner’s proposal.
B. Claim Construction
In an inter partes review, the claims of a patent shall be construed
using the same claim construction standard that would be used to construe
the claims in a civil action under 35 U.S.C. § 282(b), including construing
the claims in accordance with the ordinary and customary meaning of such
claims as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020); see also
Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Under
that standard, and absent any special definitions, we give claim terms their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art at the time of the invention. See In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
terms must be set forth with reasonable clarity, deliberateness, and precision.
See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We construe claim terms only as relevant to the parties’ contentions
and only to the extent necessary to resolve the issues in dispute. See Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017).
Petitioner contends that the parties have agreed to construe
“tessellated tiles” as “tiles fitted together to cover an area without gaps” in
the “underlying litigation,” and further contends any other claim
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construction disputes “need not be resolved by the Board as the prior art
would satisfy all proposed constructions.” Pet. 7. Patent Owner contends
“the Board should construe the phrase ‘augmented reality’ to mean the
presentation of virtual objects in a scene alongside of real-world elements,”
and further contends that “[f]or all other terms, the plain and ordinary
meaning of those terms is sufficient.” Prelim. Resp. 8–10. In its Reply,
Petitioner disagrees with Patent Owner’s proposed construction of
“augmented reality,” but does not offer its own proposed construction, and
instead contends “‘augmented reality’. . . has a plain meaning and can take
multiple forms.” Prelim. Reply 1–3.
For purposes of this decision, we adopt the agreed construction of
“tessellated tiles” as “tiles fitted together to cover an area without gaps.”
Further constructions are not necessary to resolve disputed issues for this
decision.
C. Description of the Prior Art References
1. Altman
Altman describes a location-based social network manager process
executed on a server coupled to mobile communication devices over a
wireless network. Ex. 1003 ¶ 6. The process determines the geographic
location of a mobile communication device operated by a user within an
area, displays a map representation of the area around the mobile
communication device on a graphical user interface of the mobile
communication device, and superimposes on the map the respective
locations of other users of mobile communication devices coupled to the
mobile communication device over the network. Id.
Altman further describes a map database included in the server that
provides background maps displayed on the graphical user interface of the
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mobile communication device. Id. ¶ 43. The map images comprise map
tiles that are image files of maps with varying degrees of granularity. Id.
Figure 2A, reproduced below, illustrates an example of a map displayed on a
mobile communication device. Id. ¶ 11.

Figure 2A of Altman illustrates an example of a map displayed on a mobile
communication device. Id. ¶ 51. As shown in Figure 2A, a mobile
communication device, such as cellular phone 200, has a display screen 202.
Id. The map generator displays a map on the display. Certain icons
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denoting the location of certain friends or places of interest to the user are
superimposed on the map being displayed. Id. For example, large circular
icon 208 denotes the location of the user of the mobile device, while smaller
icons 206 indicate the location of the user’s friends. Id. The display area
can be divided into a number of different sub-display areas displaying
information relating to the items displayed. Id. Thus, as shown in
Figure 2A, display area 204 displays certain information relating to the user,
such as name, and status information. Id.
2. Langseth
Langseth describes a system and method that support interacting with
virtual objects in augmented realities on mobile devices (e.g., a smartphone,
augmented reality glasses, augmented reality contact lenses, head-mounted
displays, and augmented realities directly tied to the human brain). Ex. 1006
¶ 4. The system and method enable users to create and deploy virtual
objects having custom visual designs and embedded content or other virtual
items that can be shared with other users to any suitable worldwide location.
Id. Figure 9 of Langseth, reproduced below, illustrates a user interface that
supports interacting with virtual objects in augmented realities. Id. ¶ 15.
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corresponding to a current viewpoint associated with a camera on the mobile
device and map view 940b that shows a layout associated with roads and
other features in a physical area encompassing a current location associated
with the mobile device. Id. Live view 940a and map view 940b generally
represent a virtual field where users interact with virtual object 960 and
attempt to move virtual ball 960 into a virtual goal. Id.
3. CaveLie
CaveLie describes a system and method to pre-fetch map data from a
remote map database. Ex. 1004 ¶ 1. More specifically, CaveLie describes
techniques for fetching map data over a selected subset of the entire map
data available by analyzing pre-fetch selection parameters. Id. ¶ 25. The
map data is stored at a remote server in the form of map data “tiles.” Id.
¶ 26. The techniques rely upon analysis of these pre-fetch selection
parameters to identify map data tiles as the pre-fetch map data. Id. Figure 3,
reproduced below, illustrates a portion of a data structure for a map
database.
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Figure 3 of CaveLie illustrates a data structure 200 of a portion of map
database 103. Id. ¶ 42. The map data is stored in n different zoom level
structures (only three of which are shown in Figure 3) 202A, 202B, and
202C, where each data structure is formed by map data tiles. Id. As an
example, data structure 202B shows the map data at zoom level z=2, and is
formed of 18 map data tiles, 204A–204R. Id. The map tiles represent the
basic building blocks for constructing a map display, where each map tile
contains necessary map data to construct a portion of the map display,
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including data identifying roads, buildings and geographic boundaries (e.g.,
water lines, county lines, city boundaries, state lines, mountains, water
parks, etc.). Id.
4. Gelfand
Gelfand describes a system, method, device, and computer program
product relating to utilizing a camera of a mobile terminal as a user interface
for search applications and online services to perform visual searching.
Ex. 1005 ¶ 19. Gelfand describes that a user may point a camera at a point-
of-interest such as a coffee shop and capture an image of the coffee shop.
Id. ¶ 62. The system then invokes a recognition scheme to recognize the
coffee shop, find and locate other nearby coffee shops (or other points-of-
interest), and display an overhead map of the surrounding area including
superimposed visual tags corresponding to the other coffee shops (or other
points-of-interest). Id. The visual tags show enlarged images relative to the
points-of-interest and contain information about the image, displayed
therein. Id. ¶ 65.
5. Sterkel
Sterkel describes techniques for generating a moving map that include
a graphical representation of a vehicle, such as an airplane, and content
relevant to a location of the vehicle as the vehicle is in transit. Ex. 1007,
(57). The moving map displays the current location of the vehicle derived
by modifying a delayed location of the vehicle to account for a speed, a
heading, and an amount of delay. Id.
Content items are included on the moving map if they are within a
bounded region around the location of the vehicle or in the vehicle, where
the bounded region changes as the vehicle moves in transit. Id. Sterkel
further describes that upon receiving information identifying the vehicle, a
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moving map engine causes a user’s device to display a moving map of the
vehicle by generating map tiles around the current location of the vehicle.
Id. at 7:62–66.
In one embodiment, the map tiles may be tiles that are retrieved from
a mapping service that provides satellite imagery, a road map, or any other
geolocated information for a region that includes the vehicle’s location or
predicted location. Id. at 10:63–11:1. Figure 3, reproduced below,
illustrates an example user interface. Id. at 2:29–30.

Figure 3 of Sterkel represents an example user interface. Id. at 19:37. The
user interface includes a map region for displaying map tiles and visual
representations, such as markers, of content items and/or location
information. Id. at 19:38–40.

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III. ANALYSIS OF THE CHALLENGED CLAIMS
The Petitioner challenges claims 1–9, 11–20, 23–32, and 34–36 of the
’518 patent. Petitioner asserts unpatentability of the claims based on
obviousness.
A. Obviousness
A claim is unpatentable if the differences between the claimed subject
matter and the prior art are such that the claimed invention, as a whole,
would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art to which the claimed
invention pertains. 35 U.S.C. § 103.
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) so-called “secondary considerations,”
including commercial success, long-felt but unsolved needs, failure of
others, and unexpected results. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966) (“the Graham factors”). Neither the Petition nor the Preliminary
Response presents evidence on the fourth Graham factor. We therefore do
not consider that factor in this decision.
B. Altman and Langseth Challenge
Petitioner contends that claims 1–9, 11–14, 18–20, 23–32, and 34–36
would have been obvious over Altman in combination with Langseth.
Pet. 11. Of these claims, claims 1 and 34 are the independent claims. See
supra. Petitioner contends claim 34 is “substantially identical” to claim 1,
and, in its analysis of claim 34, relies on its analysis of claim 1. Pet. 50.
Likewise, Patent Owner addresses claims 1 and 34 together. See, e.g.,
Prelim. Resp. 16, 19. We initially focus our analysis on claim 1.
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1. Claim 1
Petitioner contends each limitation of claim 1 is met by the
combination of Altman and Langseth, and provides an element-by-element
analysis. Pet. 11–31. Patent Owner disputes this assertion, and focuses its
response on the “tessellated tiles” limitations in claim elements 1[d][iii] and
1[d][iv].3
a. Element 1[d]iii
Claim element 1[d][iii] recites that the processor recited in claim
element 1[d] is configurable to “access an area tile map of the area of
interest, the area tile map represented by a set of tile subareas that includes
one or more tessellated tiles from a tessellated tile map.” Pet. 21 (emphasis
added). As noted supra, the parties have agreed to construe “tessellated
tiles” as “tiles fitted together to cover an area without gaps.” Id. at 7 (citing
Ex. 1042, 002).
Petitioner contends that Altman discloses tessellated tiles that meet
this limitation. Pet. 22–25. Petitioner first argues the Altman discloses map
tiles. Id. at 22 (“Altman further discloses that background map data can be
stored as ‘map tiles.’”). Next, Petitioner asserts “[a person of ordinary skill]
would have understood that these map tiles, which each constitutes an image
of a small region or ‘tile’ subdivision of a real-world area, constitute an area
tile map.” Id. Petitioner also asserts that “Altman further discloses that the
area tile map is represented by a set of tile subareas that includes one or
more tessellated tiles.” Id. (emphasis omitted). Finally, Petitioner contends

3 Patent Owner also contests Petitioner’s construction of AR. See discussion
in Section II.B, supra.
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that “Altman further discloses that the map tiles can be tessellated tiles.” Id.
at 23 (citing Ex. 1003 ¶¶ 37, 43).
Citing Altman’s Figure 2A, supra, Petitioner reasons that the figure
“shows a large geographic area covering multiple towns with no gaps in map
coverage.” Id. Petitioner explains, “By storing tiles that can be used to
‘display a regional street level map for any area in the U.S.,’ Altman
discloses that the tessellated tiles are from a tessellated tile map.” Id. at 24
(quoting Ex. 1003 ¶ 43). Further, Petitioner asserts that “[a person of
ordinary skill] would have understood that each layer or the area tile map as
a whole (considering all layers collectively) constitutes a tessellated tile
map.” Id. (citing Zyda Decl. ¶¶160–162). Addressing the requirement in
claim 1 for “subareas,” Petitioner asserts, “A [person of ordinary skill]
would have understood that Altman’s system uses ‘subsets’ of map tiles in
order to display a map covering an area of interest larger than the size of any
one tile.” Id. at 25 (citing Zyda Decl. ¶ 162).
Patent Owner responds that Petitioner fails to demonstrate that
Altman meets this limitation. Prelim. Resp. 16–19. Patent Owner argues
that “Altman . . . never mentions ‘tessellated tiles’ or a ‘tessellated tile map.’
The Petition glosses over this deficiency.” Id. at 16. Patent Owner points
out that in paragraph 37 of Altman, relied on by Petitioner to support its
argument, “[t]he nature of the map tiles and how they are used is not
described in this paragraph at all.” Id.
Patent Owner discusses the other portions of Altman relied on by
Petitioner, including Figure 2A, and concludes, “Nothing in any of these
disclosures requires that Altman’s map inherently is made up of ‘tessellated
tiles’ within identified tile subareas that cover particular areas of interest as
in ’518 Patent claims 1 and 34.” Id. at 17–18 (citing, inter alia, Cont'l Can
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Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
(inherency not “established by probabilities or possibilities”)). Patent
Owner sums up this argument by asserting that “contrary to the ’518 Patent,
Altman teaches the use of a voluminous, highly detailed map that can be
expanded instead of multiple, smaller tessellated tiles relating to the area of
interest near the mobile device.” Id. at 18.
b. Element 1[d][iv]
Separately, Patent Owner contends that Altman fails to teach or
suggest the portions of claim element 1[d][iv]] reciting “identify[ing] a tile
subarea” and “one or more tessellated tiles within the identified tile subarea
. . . associated with one or more AR content objects.” Prelim. Resp. 19–22
(emphasis added). In addition to its argument that Altman does not disclose
tessellated tiles, Patent Owner asserts that “at most” Altman teaches
“associating icons with specific physical locations and displaying icons on a
map at those locations.” Id. at 21. “There simply is no teaching of using
‘one or more tessellated tiles within the identified tile subarea are associated
with one or more AR content objects’ as in ’518 Patent claims 1 and 34.”
Id.
Patent Owner challenges Petitioner’s assertion that Langseth provides
this teaching: “[T]he Petition does not provide any citation to support its
contention that ‘it would have been obvious to a [person of ordinary skill] to
implement the combination wherein tessellated tiles are associated with one
or more AR content objects.’” Id. at 21–22.
c. Analysis
We are not persuaded that Petitioner has demonstrated sufficiently
that Altman and Langseth meet the “tessellated tiles” limitations of claim 1.
Specifically, we are not persuaded that Petitioner has demonstrated that
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Altman teaches or suggests “access[ing] an area tile map of the area of
interest, the area tile map represented by a set of tile subareas that includes
one or more tessellated tiles from a tessellated tile map” or “identify[ing] a
tile subarea . . . wherein one or more tessellated tiles within the identified tile
subarea are associated with one or more AR content objects.” As Patent
Owner points out, there is no discussion in Altman of tessellated tiles.
Prelim. Resp. 16. While it is true that Altman discusses map tiles, there is
no disclosure in Altman of how those tiles are arranged, much less whether
they are “tiles fitted together to cover an area without gaps.” Id. at 18–19.
The portions of Altman relied on by Petitioner do not support its
argument that Altman discloses tessellated tiles. Thus, for example,
paragraph 37 of Altman, cited by Petitioner, mentions “map tiles” but
provides no description of what they are or how they are arranged. Ex. 1003
¶ 37. Similarly, paragraph 43 of Altman, also cited by Petitioner, describes
the map tiles as “image files of maps with varying degrees of granularity,”
but does not provide any description of how the tiles are arranged. Id. ¶ 43.
Nor does Figure 2A of Altman or its description in the text demonstrate that
Altman’s map is made up of tessellated tiles. Prelim. Resp. 17.
Petitioner does not support its argument that because Altman’s Figure
2A shows “a large geographic area covering multiple towns with no gaps in
map coverage” that “a person of ordinary skill would have understood that
each layer or the area map as a whole . . . constitutes a tessellated tile map.”
Pet. 24. As Patent Owner points out, individual map tiles can be used to
display certain areas of a map without being sets of tessellated tiles. Prelim.
Resp. 18. And even if individual tiles were used in Altman’s maps, nothing
in Altman discloses or suggests that there are no gaps between the tiles. Id.
at 18–19.
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Nor does the testimony of Dr. Zyda convince us that Altman meets
the “tessellated tiles” limitations. Dr. Zyda’s testimony tracks the arguments
in the Petition closely. See Zyda Decl. ¶¶ 160–162. As support for his
conclusion (id. ¶ 160) that “Altman discloses that the map tiles can be
tessellated tiles,” Dr. Zyda cites the same disclosures from Altman (Ex. 1003
¶¶ 37, 43, and Fig. 2A) as does the Petition. See Pet. 23 (citing Ex. 1003
¶¶ 37, 43). As just discussed, those disclosures do not describe how the tiles
in Altman are arranged and do not support the contention that they are
tessellated tiles.
Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art
would have understood that these map tiles are tessellated tiles” cites
paragraph 43 of Altman for support. See Zyda Decl. ¶ 161. For the reasons
given supra, that paragraph in Altman does not support this conclusion.
Moreover, Dr. Zyda’s conclusion that “[a] person of ordinary skill in the art
would have understood that each layer or [sic] the area tile map [in Altman]
as a whole (considering all layers collectively) constitutes a tessellated tile
map” (Zyda Decl. ¶ 161) cites no supporting evidence.
Our Trial Practice Guide cautions that “[e]xpert testimony . . . cannot
take the place of a disclosure in a prior art reference, when that disclosure is
required as part of the unpatentability analysis.” Patent Trial and Appeal
Board Consolidated Trial Practice Guide 36 (November 2019), available at
https://www.uspto.gov/TrialPracticeGuideConsolidated. We are not
persuaded by Dr. Zyda’s speculations on what persons of ordinary skill
would have known (including those discussed supra) because either they are
not properly supported by the cited evidence, or they do not cite any
evidentiary support at all.
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Petitioner identifies Altman, rather than Langseth, to meet the
“tessellated tiles” limitation. Pet. 21. Thus, Petitioner cannot rely on
Langseth to provide the disclosure missing from Altman.
To summarize, for the reasons given, Petitioner has failed to
demonstrate that Altman discloses tessellated tiles as those have been
defined by the parties. Prelim, Resp. 16–19. Because both claim elements
1[d][iii] and 1[d][iv] recite tessellated tiles, Petitioner has not presented
sufficient evidence of a reasonable likelihood of prevailing on this challenge
to claim 1.
2. Claim 34
As noted, Petitioner asserts that claim 34 “is substantially identical to
claim 1, with . . . immaterial differences,” and further provides an analysis of
the differences in relation to Altman and Langseth. Pet. 42–43. Patent
Owner does not dispute this. For the reasons discussed above with respect
to claim 1, we are not persuaded that Petitioner has demonstrated a
reasonable likelihood of prevailing on this challenge to claim 34.
3. Claims 2–9, 11–14, 18–20, 23–32, 35, 36
Claims 2–9, 11–14, 18–20, and 23–32 depend from claim 1, and
claims 35 and 36 depend from claim 34. For the reasons discussed above
with respect to claims 1 and 34, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood of prevailing on this challenge to
claims 2–9, 11–14, 18–20, and 23–32.
C. Altman, Langseth, and CaveLie Challenge
Petitioner asserts that claims 1–9, 11–14, 18–20, 23–32, and 34–36
would have also been obvious over Altman, Langseth, and CaveLie. Pet. 43.
Specifically, Petitioner contends “[t]o the extent there is any question
whether Altman’s map tiles satisfy the ’518 Patent’s map tile limitations,
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Patent 10,664,518 B2
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including those of claim elements 1[d][iii]-[vi] and 34[c]-[f], CaveLie
provides implementation details which could be applied to Altman’s map
tiles.” Id. Petitioner further contends “to the extent there is any question
whether Altman renders claim 23 obvious, it would have been obvious over
the combination of Altman and CaveLie.” Id.
Petitioner argues that “it would have been . . . obvious to combine
Altman with CaveLie.” Pet. 46 (citing Zyda Decl. ¶¶ 305–311). Petitioner
explains that “[a person of ordinary skill] would have naturally looked to
CaveLie for further implementation details on the tessellated tiles already
disclosed in Altman.” Id. at 46–47 (emphasis added). Patent Owner
responds that “there is no citation to anything in these references themselves
to support this argument, which is apparently based on hindsight.” Prelim.
Resp. 36.
We agree with Patent Owner that Petitioner has failed to demonstrate
a sufficient motivation to combine Altman with CaveLie, other than
hindsight. As indicated in the argument from the Petition just quoted,
Petitioner’s rationale for combining Altman and CaveLie proceeds on the
assumption that Altman discloses tessellated tiles, for which CaveLie
allegedly provides “further implementation details.” Pet. 46–47. However,
in our analysis of Altman, we conclude that Petitioner has not demonstrated
sufficiently that Altman teaches or suggests tessellated tiles. See supra,
Section III.B.1.c.
Patent Owner also contends adding CaveLie does not “alleviate
known deficiencies” identified by Patent Owner with respect to the ground
involving Altman and Langseth. Prelim. Resp. 29–38. Among these is the
argument that “despite the Petition’s conclusory language, the tiles of
CaveLie are not described as fitted together, covering an entire area, or
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without gaps as the Petition defines tessellation.” Id. at 32. However,
because we conclude that Petitioner has not demonstrated a sufficient
rationale for combining the teachings of the references asserted in this
challenge, we do not address this issue.
Taking into account the Petition and Patent Owner’s response, we are
not persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on this challenge to claims 1–9, 11–14, 18–20, 23–32, and 34–36.
D. Altman, Langseth, CaveLie, and Gelfand Challenge
Petitioner asserts that claims 1–9, 11–20, 23–32, and 34–36 would
have also been obvious over Altman, Langseth, CaveLie, and Gelfand.
Pet. 51. Specifically, with respect to claims 1–9, 11–14, 18–20, 23–32, and
34–36, Petitioner relies on its contentions based on the combination of
Altman, Langseth, and CaveLie. Id. As to claims 15–17, Petitioner relies
on the combination of Altman, Langseth, and CaveLie, further combined
with Gelfand. Id. at 51–55. Petitioner relies on Gelfand for its teaching of
“us[ing] stored images to determine if a mobile phone camera is pointed at a
recognized object.” Id. at 51.
Patent Owner contends Gelfand does not address the deficiencies
identified by Patent Owner with respect to Altman, Langseth, and CaveLie.
Prelim. Resp. 38. We agree. The addition of Gelfand does not provide the
teaching or suggestion of tessellated tiles, or provide a persuasive motivation
to combine the teachings of Altman and CaveLie.
Patent Owner also contends the Petition does not provide a proper
motivation to incorporate particular features of Gelfand into the combination
of Altman, Langseth, and CaveLie. Id. at 38–39. However, because
Petitioner has not demonstrated that even if combined, the references would
meet all the elements of the claims, we do not address this issue.
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Taking into account the Petition and Patent Owner’s response, we are
not persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on this challenge.
E. Sterkel Challenge
Petitioner asserts that claims 1–8, 11–14, 18–20, 23, 24, 26–32, and
34–36 would have been obvious over Sterkel. Pet. 55.
1. Claim 1
Petitioner contends each limitation of claim 1 is met by Sterkel, and
provides an element-by-element analysis. Pet. 55–65. As was the case for
previously-discussed challenges, Patent Owner disputes this assertion, and
focuses its response on the “tessellated tiles” limitations in claim elements
1[d][iii] and 1[d][iv]. Prelim. Resp. 44–49.
a. Claim element 1[d][iii]
Petitioner contends that “[i]t would have . . . been obvious to a [person
of ordinary skill] that Sterkel’s map tiles can be tessellated tiles.” Pet. 60.
Referring to Sterkel’s Figure 11, Petitioner continues, “A [person of
ordinary skill] would have known that map tiles from mapping services
commonly provide map tiles covering an area that fit together with no gaps.”
Id. at 61.
Patent Owner responds that “Sterkel is silent as to the use of
tessellated tiles from a tessellated tile map.” Prelim. Resp. 44. Patent
Owner continues, “Sterkel discloses that ‘[m]ap elements (such as ‘tiles’)’
may be obtained from a third-party provider of ‘satellite imagery, road map,
or any other geolocated information.’ The term ‘tessellated’ or its variants
are completely absent from Sterkel.” Id. at 44–45 (alteration in original)
(citation omitted). Referring to Figure 11 of Sterkel, Patent Owner argues
that “even if Figure 11 depicts a ‘large geographic areas with no gaps,’
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Patent 10,664,518 B2
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[citing Pet., 61], it does not disclose the use of multiple ‘tiles fitted together
to cover an area without gaps.’” Id. at 45–46.
b. Claim element 1[d][iv]
Petitioner contends that “Sterkel satisfies this limitation because it
discloses presenting one or more map tiles (tile subarea) covering an area
surrounding the vehicle’s location (area of interest), and any map tiles can
cover an area that is associated with the locations of various content items,
which are displayed as AR content objects.” Pet. 62. Petitioner continues,
“Sterkel further discloses that one or more tessellated tiles within the
identified tile subarea are associated with one or more AR content objects.”
Id. at 63 (emphasis omitted).
Patent Owner responds that “the Petition does not explain why it
would have been obvious to associate Sterkel’s content markers with one or
more tessellated tiles, instead of particular locations or regions as taught by
Sterkel.” Prelim. Resp. 48–49. Patent Owner continues, “[n]or does the
Petition explain what allegedly would have motivated a [person of ordinary
skill] to change Sterkel’s location based content markers and to instead
associate them with tessellated titles.” Id. at 49.
c. Analysis
We are not persuaded that Petitioner has demonstrated sufficiently
that Sterkel meets the “tessellated tile” limitations of claim 1. Specifically,
we are not persuaded that Petitioner has demonstrated that Sterkel teaches or
suggests “access[ing] an area tile map of the area of interest, the area tile
map represented by a set of tile subareas that includes one or more
tessellated tiles from a tessellated tile map” or “identify[ing] a tile subarea
. . . wherein one or more tessellated tiles within the identified tile subarea are
associated with one or more AR content objects.”
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We agree with Patent Owner that Sterkel is “silent as to the use of
tessellated tiles from a tessellated tile map.” Prelim. Resp. 44. Moreover,
Petitioner’s reliance on Sterkel’s Figure 11 is misplaced. As Patent Owner
explains, “Sterkel never says that Figure 11 depicts more than a single map
image.” Id. at 45 (citing Ex. 1007, 2:63–66). Thus, even if Sterkel’s map
shown in Figure 11 depicts “a large geographic area with no gaps,” as
Petitioner contends, it does not disclose the use of multiple tiles “fitted
together to cover an area without gaps.” See Prelim. Resp. 46 (citing Pet.
61).
As Patent Owner points out, Petitioner’s argument regarding Sterkel
relies almost entirely on the testimony of Dr. Zyda. See, e.g., Pet. 60–61
(citing Zyda Decl. ¶¶ 378, 372). Dr. Zyda opines that “[i]t would have
further been obvious to one of ordinary skill in the art that Sterkel’s map
tiles can be tessellated tiles.” Zyda Decl. ¶ 378 (emphasis omitted); see also
Zyda Decl. ¶ 375 (“Sterkel additionally discloses and renders obvious that
the area tile map is represented by a set of tile subareas that includes one or
more tessellated tiles.”) (emphasis omitted).
We are not persuaded by this testimony that Sterkel meets the
tessellated tiles limitations. For many of his opinions, including those just
quoted, Dr. Zyda does not provide sufficient citations to supporting
evidence. See also Zyda Decl. ¶ 378 (“A person of ordinary skill in the art
would have known that map tiles from mapping services such as those
providing satellite imagery or road maps commonly provide map tiles
covering an area that fit together with no gaps.”) (no authority cited); id.
(“A person of ordinary skill in the art would have appreciated that such
‘smooth movement’ of the map would have been best facilitated by map
tiles that fit together with no gaps, such that the moving map could be
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rendered continuously.”) (no authority cited); id. (“Accordingly, the only
reasonable inference is that Sterkel’s map tiles are implemented without
gaps, i.e., they are tessellated tiles.”) (no authority cited). Under our rules,
such opinions, presented without supporting citations, are entitled to “little
or no weight.” 37 C.F.R. § 42.65 (a) (“Expert testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight.”).
As noted supra, our Trial Practice Guide cautions that “[e]xpert
testimony . . . cannot take the place of a disclosure in a prior art reference,
when that disclosure is required as part of the unpatentability analysis.”
Consolidated Trial Practice Guide 36. We are not persuaded by Dr. Zyda’s
speculations on what persons of ordinary skill would have known (including
those discussed supra). Either they are not properly supported by the cited
evidence, or they lack any evidentiary support at all.
To summarize, for the reasons given, Petitioner has failed to
demonstrate that Sterkel discloses tessellated tiles as those have been
defined by the parties. Prelim. Resp. 45–47. Because both claim elements
1[d][iii] and 1[d][iv] recite tessellated tiles, Petitioner has not presented
sufficient evidence of a reasonable likelihood of prevailing on this challenge
to claim 1.
2. Claim 34
For the reasons discussed above with respect to claim 1, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood of
prevailing on this challenge to claim 34.
3. Claims 2–8, 11–14, 18–20, 23, 24, 26–32, 35, 36
These claims depend from claim 1 or from claim 34. For the reasons
discussed above with respect to claims 1 and 34, we are not persuaded by
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Petitioner’s analysis that Petitioner has demonstrated a reasonable likelihood
of prevailing on this challenge to dependent claims 2–8, 11–14, 18–20, 23,
24, 26–32, 35, and 36.
IV. CONCLUSION
For the foregoing reasons, we have determined that Petitioner has not
shown a reasonable likelihood that it would prevail with respect to any of the
challenged claims.
V. ORDER
Upon consideration of the record before us, it is,
ORDERED that no inter partes review is instituted.

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Patent 10,664,518 B2
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FOR PETITIONER:

Heidi L. Keefe
Lauren J. Krickl
COOLEY LLP
hkeefe@cooley.com
lkrickl@cooley.com

FOR PATENT OWNER:

Matt Blackburn
mblackburn@diamondmccarthy.com

Evan Boetticher
eeb@nlaw.northwestern.edu