On May 21, Niantic (developer of hilariously addicting games Pokemon Go and Ingress) invalidated portions of Barbaro Technologies, LLC’s US Patent No. 8,228,325 (the “325 Patent”) on an interactive virtual thematic environment in U.S. District Court for the Northern District of California. (Barbaro Technologies, LLC v. Niantic, Inc., Case No. 3:2018-cv-02955). Barbaro’s related and more general US Patent No. 7,373,377 (“the ‘377 Patent”) is also being asserted in this action, but it was not specifically ruled upon in this decision.
The district court ruled that under 35 U.S.C. § 101 and the eligibility standard outlined in Alice Corp. v. CLS Bank Int’l, claims 1, 3, and 6 of the ‘325 Patent are directed to ineligible subject matter. Claim 1 is reproduced below and is illustrative (sorry, patent attorneys, the claim isn’t indented because Squarespace was not happy with the formatting):
A computer system for providing a virtual thematic environment, comprising:
at least one memory having at least one program comprising the
retrieving information for utilization with a three-dimensional virtual thematic environment, from external sources over the internet, said information including a real-world geographic location of a user within said three-dimensional virtual thematic environment; and integrating said information into the three-dimensional virtual thematic environment, such that the three-dimensional virtual thematic environment includes said real-world geographic location displayed to the user as said three-dimensional virtual thematic environment; wherein the user interacts with the three-dimensional virtual thematic environment as a simulated real-world interaction, depending on the user’s geographical three-dimensional movement through the three-dimensional virtual thematic environment; and at least one processor for running the program.
VERY Brief Explanation of Section 101:
Under Section 101 of the Patent Act, “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor….” 35 U.S.C. § 101. The Supreme Court “has long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice at 216.
To help to make sense of this standard, district courts and the USPTO apply a “two-step test” to determine patent eligibility:
In evaluating whether claims are patent-eligible, Step 1 is to “determine whether the claims at issue are directed to” a “patent-ineligible concept” such as a law of nature, natural phenomenon, or abstract idea. At Step 2, we determine whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application. Alice, at 217-218.
Back to the case!
The court ruled that the claims demonstrate that the ‘325 Patent is directed at a result—integrating the real and virtual worlds—rather than at any particular method of achieving it. Claim 1 merely recites typical computer components (a memory and a processor) for combining a real and virtual world without explaining what is unique about the hardware itself, or method for using the hardware.
Applying Step 2, the court was unconvinced that the “nature of the claims” were transformed into something patent-eligible because the concept of building models of real-world locations, and integrating the user’s location into said models, long predates computers. Using a computer to make this happen did not change this fact.
The court likely would have reached a different result if the challenged claims demonstrated that the invention enabled computers “to operate more quickly or efficiently” or “solve any technological problem,” like in Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020). But that was not the case here.
As you’re considering patent protection for inventions in the software/gaming space, get creative. Does this invention utilize a new and useful method for getting to a result of the game? Are computing resources used more efficiently? Is a user’s interaction with the invention achieved in a new and useful way? You will not have much luck in court or the USPTO if you come up with a method and merely say “apply it” to a computer.
What’s Next in The Case?
Applying Section 101 is tough, and different courts issue conflicting orders on its interpretation all the time. (Again, as noted above, the USPTO has issued a lot of guidance documents to make sense of it all.) But this seems to be a well-reasoned decision.
That has not stopped Barbaro from filing a motion for reconsideration on the order. As of June 29, the reconsideration motion is fully briefed, but we do not have a decision. The court will likely deny the motion for reconsideration. (Speaking purely from experience, these motions are rarely granted. But the court likely permitted briefing in order to flesh out the record more fully for a probable appeal.)
Given the other ‘377 Patent still has not been ruled on, I also suspect Niantic will file another similar motion seeking to invalidate some of those claims on similar grounds. Alternatively, the parties could stipulate to a judgment and take this case up to the U.S. Court of Appeals for the Federal Circuit and fight over the Section 101 issues there before they spend more of their clients’ retainers in district court.
I will keep following this case, so stay tuned for any saucy updates!
UPDATE 08/12 – Barbaro’s Motion for Reconsideration Denied. Pick your Claim Construction Terms Wisely
Yesterday the court denied Barbaro’s motion for reconsideration. Under California Local Rule 7-9, Barbaro endeavored to show that “[a] manifest failure of the Court to consider material facts or dispositive legal arguments which were presented….” in the earlier briefing.
I will admit it’s a little awkward to go back to the judge and tell him … “Hey you screwed up.” Sometimes fortune favors the bold, but here it most certainly did not. Well what happened? Here, let me meme ‘spain it …
Specifically, Barbaro argued that because “virtual world” is a term of art which refers to environments that are necessarily computer-based, Claims 1, 3, and 6 necessarily did not implement a pre-Internet abstract idea.
In denying Barbaro’s motion, the court found that because Bararbo didn’t argue that “virtual world” should be construed different from how it is used in the ‘325 Patent, the court didn’t need to address this argument during the briefing.
Similarly, Barbaro attempted to argue that the enumerated pre-Internet virtual environments cannot “integrate” real-world information in the same way the invention claimed by Claims 1, 3, and 6 of the ‘325 Patent does. Here again, the court found that Barbaro failed to offer its proposed definition during claim construction, so it cannot attempt to get this last shot in after the buzzer. Wamp wamp.
Finally, sticking to its initial rationale, the Court reiterated that the ‘325 patent “recite only generic computer components,” to implement the invention and in fact claim as an advantage to be implementable via a wide range of “generic and functional hardware.” (Court Order at p. 4).
I’ll keep peeking at this case from time to time, but it looks like the 101 issue on the ‘325 patent are primed for appeal.