Patent claims directed to mapping “a physical location determined by the user . . . to a video game environment” have survived a Rule 12(b)(6) motion alleging patent-ineligibility under 35 U.S.C. § 101 and the Alice patent-eligibility test. Blackbird Tech LLC v. Niantic, Inc., No. 1-17-cv-01810 (D. Del. Oct. 31, 2018). U.S. Patent No. 9,802,127 allows a user to “experience objects from the users [sic] entered location while playing the video game.” Representative claim 1 recites:
1. A computer-implemented method comprising:
receiving a first position indicator representing a first current physical location for a user of a video game, wherein said first position indicator is determined at least in part by taking a global navigation satellite system reading of said first current physical location;
obtaining image data relating to said first current physical location, said image data comprising two or more camera images of said first current physical location;
mapping said image data into a virtual environment of said video game by displaying said image data as a video, wherein said user experiences within said virtual environment real life objects from said first current physical location, and said user simultaneously encounters within said virtual environment virtual objects that are not physically present in said first current physical location;
receiving a second position indicator representing a second current physical location for said user as said user navigates a geographic area surrounding said first current physical location;
saving at least said second position indicator to a memory; and
storing at least said second position indicator in said memory when said video game is not executing.
In arguing for application of the Aliceabstract idea test, the defendant took a broad approach in alleging an unpatentable abstract idea: arguing “that the ’127 patent claims are directed to the abstract idea of ‘receiving, processing, and displaying or storing location information.’” The defendant argued that its motion should be decided like a Rule 12 motion in a 2016 Colorado case, Concaten, Inc. v. Ameritrack Fleet Solutions, LLC, which held patent-ineligible claims directed to providing data to assist in snow removal.
But the court here disagreed, because here “[t]he mapping application requires taking camera images of a real physical space, where the user is located, and integrating those images as a video into a virtual video game environment.” Moreover, “the mapping step here is tethered to specific instructions” specifying images to be mapped, their locations, and how to display them. Citing Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), the court found that the defendant’s proposed abstract idea was too broad, applying “an inappropriate level of abstraction such that its description of the claims is ‘untethered from the language of the claims.’”
Nor did the Federal Circuit’s 2016 decision in Apple, Inc. v. Ameranth, Inc., finding an arrangement of menus, help the defendant. The claims there were simply “result focused,” unlike the ’127 patent claims. The present claims were more like the claims in the Federal Circuit’s 2016 decision in McRO, Inc. v. Bandai Namco Games America Inc. The court explained that, as in McRO, here:
[t]he claimed technology allegedly solves the problem in the existing art of being confined to a “predetermined and merely virtual location” in a video game by “incorporating a user's physical location as part of the game environment.” This is done by the specific means of first taking camera images of the user's physical location, and then mapping those images as a video into the virtual game environment. The asserted claims, like in McRO, are “directed to the creation of something physical” – the display of camera images depicting the user's location overlaid with the virtual images from the video game “for viewing by human eyes.” The claimed improvement is to “how the physical display operated,”" that is, to “produce better quality images” by simultaneously displaying real and virtual objects, creating a more interactive video game environment.
(Citations omitted.) Thus, it was “Game Over” for the defendant (sorry, couldn’t resist) at step one of the Alicetest because the ’127 patent claims, the court concluded, were not directed to an unpatentable abstract idea. There was no need to go on to Alice part two and consider whether there was a significant additional innovation.
Lessons for Practice
Although not by design, this is my second post in a row where McRO saved the day for a patent owner. As a patent drafter or litigant, if you can show technical steps leading to a technical solution, you may save your patent claims from Alice.