IPR2021-01119
`U.S. Pat. No. 10,664,518
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NIANTIC, INC.,
`Petitioner
`
`v.
`
`NANT HOLDINGS IP, LLC, and NANTWORKS, LLC,
`Patent Owners
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`
`
`Case No. IPR2021-01119
`U.S. Patent No. 10,664,518 B2
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`
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`U.S. Pat. No. 10,664,518
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`NIANTIC, INC.,
`Petitioner
`
`v.
`
`NANT HOLDINGS IP, LLC, and NANTWORKS, LLC,
`Patent Owners
`
`
`
`Case No. IPR2021-01119
`U.S. Patent No. 10,664,518 B2
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
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`
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`Patent Owner NantWorks’ Preliminary Response (“POPR”) contradicts
`
`IPR2021-01119
`U.S. Pat. No. 10,664,518
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`NantWorks’ arguments in District Court. NantWorks is talking out of both sides of
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`its mouth, and its POPR should be given little to no weight. NantWorks argued for
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`a broad reading of “augmented reality” in District Court, seeking to cover
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`applications ranging from virtual icons on digital maps to graphical overlays on real-
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`time camera imagery. (Ex. 1038, Ex. 3 at 014.)1 But now the POPR proposes a new,
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`narrower construction for “augmented reality” or “AR” never disclosed in District
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`Court that NantWorks claims excludes overlays on maps. (See POPR at 8-9, 13-14;
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`Ex. 1042 (Joint Claim Construction Statement).)
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`Petitioner addressed NantWorks’ District Court constructions, including for
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`“AR content objects,” throughout the Petition, and all Grounds satisfy those
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`constructions. (E.g., Petition at 7, 27-29, 63.) All Grounds also satisfy NantWorks’
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`improper new construction. Therefore, the Board should institute review.
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`Contrary to NantWorks’ argument, “augmented reality” (or “AR”) has a plain
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`meaning and can take multiple forms. (Cf. Ex. 1002 (“Zyda”), ¶¶28-31.) As shown
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`in the prior art, including Langseth, “augmented reality” can refer to overlaying
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`virtual objects on a graphical representation of the real world, such as a map, and to
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`overlaying virtual objects on a camera image of the real world. (E.g., Ex. 1006
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`1 NantWorks’ contentions point to no specific features of the accused products for
`the “augmented reality” term in the preamble. (See Ex. 1038, Ex. 3 at 009.)
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`-1-
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`(“Langseth”), ¶¶0032-0034 (map view is an “augmented reality”); id., ¶0012 (live
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`IPR2021-01119
`U.S. Pat. No. 10,664,518
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`view is “an augmented reality”); Zyda ¶¶33-47, 95, 99, 103-104.) The ’518 Patent
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`encompasses at least these two understandings of AR: As NantWorks quotes, AR
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`“can involve overlaying the content on real-world imagery” (Ex. 1001 (“’518”),
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`7:20-23 (emphasis added)) while at the same time a “view of interest 132 is a digital
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`representation of a physical location in real-world space that is to be enabled with
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`AR content.” (Id., 10:35-37; POPR at 8.) The real-world imagery of the ’518 Patent
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`is akin to Langseth’s camera-enabled “live view” while a “digital representation of
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`a physical location in real-world space” is akin to a digital map of the real world, as
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`in Altman and Langseth’s map views. NantWorks’ infringement contentions
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`likewise appear to accuse Niantic of infringement under these same two forms of
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`AR—a map view (i.e., a “digital representation”) and an overlay on real-world
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`camera imagery: “The Pokémon Go game Map View displays Pokémon, Pokéstops
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`(#4) and Gyms (#2) are depicted [sic] on the device’s display as depicted above.
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`These are AR content objects.… The Pokémon Go game also combines Pokémon
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`AR objects with image data captured with the device’s camera to create a view of
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`interest displaying the Pokémon AR object.” (Ex. 1038, Ex. 3 at 014.)
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`Moreover, NantWorks’ new construction of “augmented reality” as “the
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`presentation of virtual objects in a scene alongside of real-world elements” is
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`satisfied by the Grounds in the Petition. For Grounds 1-3, Altman teaches presenting
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`virtual objects on a map alongside digital representations of real-world elements for
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`IPR2021-01119
`U.S. Pat. No. 10,664,518
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`the area covered by the map. (E.g., Petition at 11-12; Ex. 1003 (“Altman”), Abstract,
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`¶0108; Zyda ¶¶95-97, 104.) Langseth’s map view likewise teaches the presentation
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`of virtual objects alongside real-world elements on a map. (E.g., Petition at 12-13;
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`Langseth, ¶¶0008, 0032-0034; Zyda ¶¶95, 98-99, 103-104.) Langseth’s “live view”
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`additionally teaches that the virtual objects can be overlaid on a live camera image
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`(called a “physical reality image”). (E.g., Petition at 13; Langseth, ¶¶0011-0012;
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`Zyda ¶¶95, 99, 101, 103.) In Langseth’s live view, the camera image provides the
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`real-world elements alongside which the virtual objects are displayed. (See id.) As
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`described in the Petition, it would have been obvious to combine Altman and
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`Langseth to allow the presentation of virtual objects according to either the map view
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`of Altman/Langseth or the live view of Langseth, both of which satisfy NantWorks’
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`construction of “augmented reality.” (Petition at 14-16; Zyda ¶¶95-104.)
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`Likewise, in Ground 4, Sterkel displays virtual objects on a map view that can
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`be a digital road map or a satellite image of a real-world location. (E.g., Ex. 1007
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`(“Sterkel”), Abstract, 1:29-48, 10:65-11:4; Zyda ¶¶332-335.) Either way, Sterkel
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`teaches displaying the virtual object alongside real-world elements representing the
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`real-world landmarks and features shown in Sterkel’s map. (See Petition at 55-57;
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`Sterkel, Fig. 3; Zyda ¶¶332-342.) This too satisfies NantWorks’ new construction of
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`“augmented reality.” The Court should thus institute review on the Petition.
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`IPR2021-01119
`U.S. Pat. No. 10,664,518
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`
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`DATED: October 14, 2021
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`IPR2021-01119
`U.S. Pat. No. 10,664,518
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`attached PETITIONER’S REPLY TO PATENT OWNER’S
`the
`PRELIMINARY RESPONSE and related documents, are being served via
`electronic mail on the 14th day of October 2021, upon counsel for Patent Owners as
`follows:
`
`Matthew K. Blackburn (Reg. No. 47,428)
`Evan Boetticher (Reg. No. 63,184)
`Diamond McCarthy LLP
`mblackburn@diamondmccarthy.com
`evan.boetticher@diamondmcarthy.com
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`DATED: October 14, 2021
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`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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