CAFC Affirms Ineligibility Holding for AR Patent Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday agreed with a district court that several claims of an augmented reality (AR) patent are directed to abstract ideas and thus invalid under 35 U.S.C. § 101. The opinion was authored by Judge Cunningham.

NantWorks LLC sued Niantic, Inc. for infringement of at least claim 1 of U.S. Patent Nos. 10,664,518 and 10,403,051 via Niantic’s AR games, Pokémon Go and Harry Potter: Wizards Unite. Niantic subsequently moved for judgment on the pleadings that six claims of the ‘518 patent were ineligible under Section 101 and the district court held that those claims were directed to the abstract idea of “providing information based on a location on a map.” The court also found that there was no inventive concept as the claims “describe only generic computer components applied to the abstract idea of providing information based on a location on a map.”

Niantic also moved for summary judgment that four claims of the ’051 patent were ineligible under Section 101 and the district court found that the claims were directed to the abstract idea of “receiving information about a location and displaying materials based on that information.” And at Alice step two the court again found there was no inventive concept that made the claims eligible.

On appeal to the CAFC, NantWorks argued first that the district court oversimplified the relevant claims of the ‘518 patent under Alice step one, specifically that it to consider steps such as “the use of an area database, tessellated tiles, subareas of tiles, and areas of interest; the focus on the AR content objects; and the use of the views of interest.”  But the CAFC rejected that argument, explaining that representative claim 7, which depends form claim 1, “determines a user’s location, determines relevant information to give the user, and displays that content,” and that the purported specific steps NantWorks pointed to did not change that.

Under that characterization of the claims, the CAFC also agreed they are directed to an abstract idea, since the Federal Circuit has previously held that “claims where a ‘user draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map’ are directed to the abstract idea of ‘limiting and coordinating the display of information based on a user selection.’” Int’l Bus. Machs. Corp. v. Zillow Grp., Inc., (Fed. Cir. 2022). And in Sanderling Mgmt. Ltd. v. Snap Inc. (Fed. Cir. 2023), the CAFC also said that “‘rules to load digital image branding functions to users’ when they are in particular geographic locations are directed to the abstract idea of ‘providing information.’” Each of the steps of claim 7 could be performed using a paper and pencil, “a telltale sign of abstraction,” added the CAFC.

The opinion also distinguished the case from McRO, Inc. v. Bandai Namco Games Am. Inc. (Fed. Cir. 2016), which involved claims that provided “limited rules in a process specifically designed to achieve an improved technological result in [a] conventional industry practice.”

Here, “[a]t best, the AR content objects ‘merely limit[ ] the field of use of the abstract idea to a particular existing technological environment,’ which ‘does not render the claims any less abstract,’” said the CAFC.

At step two, NantWorks attempted to argue that the claimed “tessellated tiles” and “tile subareas” provided an inventive concept, but the CAFC said the use of those features to pick an area on a map and create a view of interest are part of the abstract idea. Nor do the claims demonstrate an inventive concept via an “ordered combination of limitations,” the opinion added.

Turning to the ‘051 patent, the CAFC again dismissed NantWorks’ argument that the district court oversimplified the representative claims, finding that the court accurately found the claims cover a “system to determine information (i.e., a context) about the environment and then alter the presence of a relevant AR object based on the environment.” This amounts to a form of organizing human activity, said the opinion.

NantWorks pointed to the claims’ “virtual element attribute,” the requirement to “alter presence” of particular AR objects, and the “render[ing]” of AR objects to prove they were not directed to an abstract idea, but none of those elements saves the claims from abstraction, said the CAFC .

At Alice step two, NantWorks said the district court ignored expert testimony that the claims of the ‘051 patent were unconventional, but the opinion said it there was no factual dispute that the claims invoke conventional components. And NantWorks’ attempt to rely on its expert failed because the expert report merely repeated unclaimed passages from the specification or provided conclusory statements or assertions about improvements or  inventiveness. Thus, summary judgment was proper, concluded the CAFC.

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