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Petition for Inter Partes Review of U.S. Patent No. 10,403,051 B2 UNITED Petition for Inter Partes Review of U.S. Patent No. 10,403,051 B2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NIANTIC, INC., Petitioner v. NANT HOLDINGS IP, LLC, Patent Owner U.S. Patent No. 10,403,051 B2 Issue Date: September 3, 2019 Title: Interference Based Augmented Reality Hosting Platforms PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,403,051 B2 TABLE OF CONTENTS Page I. MANDATORY NOTICES UNDER §42.8(A)(1) ......................................... 1 A. Real Party-In-Interest under §42.8(b)(1) .............................................. 1 B. Related Matters under §42.8(b)(2) ....................................................... 1 C. Lead and Back-Up Counsel under §42.8(b)(3) .................................... 1 D. Service Information .............................................................................. 3 E. Power of Attorney ................................................................................ 3 II. FEE PAYMENT ............................................................................................. 4 III. REQUIREMENTS UNDER §§ 42.104 AND 42.108 AND CONSIDERATIONS UNDER §§ 314(A) AND 325(D) ............................... 4 A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 4 B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested ................................................ 4 C. Considerations under §§ 314 and 325(d) ............................................. 5 D. 37 C.F.R. § 42.108(c) ........................................................................... 5 IV. OVERVIEW OF THE ’051 PATENT ........................................................... 6 A. Level of Ordinary Skill in the Art ........................................................ 6 B. Specification Overview ........................................................................ 6 V. CLAIM CONSTRUCTION ......................................................................... 10 VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE ......................... 11 A. Summary and Date Qualification of the Prior Art ............................. 12 1. Yu [Ex. 1003] ........................................................................... 12 2. Sanz-Pastor [Ex. 1004] ............................................................ 14 3. Mullen [Ex. 1005] .................................................................... 16 B. Ground 1: Single-Reference Obviousness of Claims 1, 5-9, 18, 22-23, 27-29, 34, 36, 38, 43 Over Yu ................................................ 18 1. Claim 1 ..................................................................................... 18 -i- TABLE OF CONTENTS (continued) Page 2. Claim 5: “The system of claim 1, wherein the AR server is a remote server coupled with the AR capable device via a wireless network.” ........................................................... 43 3. Claim 6: “The system of claim 1, wherein the relevant AR object is caused to be rendered based on a position of the AR capable device relative to the environment.” .............. 45 4. Claim 7: “The system of claim 1, wherein the relevant AR object is caused to be rendered based on an orientation of the AR capable device relative to the environment.” ........................................................................... 45 5. Claim 8: “The system of claim 1, wherein the relevant AR object is caused to be rendered within an AR game.”....... 46 6. Claim 9: “The system of claim 1, wherein the relevant AR object is caused to be rendered by superimposing a visual image of at least one relevant AR object over an image of the environment.” ...................................................... 47 7. Claim 18: “The system of claim 1, wherein the presence of the relevant AR object is altered to include a non- visible presence.” ..................................................................... 48 8. Claim 22: “The system of claim 1, wherein the determination of whether to alter presence of the relevant AR object depends on a time.” ................................................ 49 9. Claim 23: “The system of claim 22, wherein the presence alteration of the relevant AR object changes with the time.” ........................................................................................ 50 10. Claim 27: “The system of claim 1, wherein the AR server is further configured to enable the AR capable device to populate the environment with at least one of the relevant AR objects.” ............................................................................. 51 11. Claim 28: “The system of claim 1, wherein the environment comprises an AR environment.” ......................... 52 -ii- TABLE OF CONTENTS (continued) Page 12. Claim 29: “The system of claim 28, wherein the AR environment includes real-world elements and virtual elements.” ................................................................................. 54 13. Claim 34: “The system of claim 1, wherein the AR server is further configured to enable the AR capable device to have an interaction with the rendered relevant AR object.” ..................................................................................... 54 14. Claim 36: “The system of claim 1, wherein the mobile device is a cell phone.” ............................................................ 54 15. Claim 38: “The system of claim 1, wherein the mobile device is a tablet computer.” .................................................... 55 16. Independent claim 43 ............................................................... 55 C. Ground 2: Obviousness of Claims 1, 5-11, 15, 18, 22-23, 27- 29, 34, 36, 38, and 43 Over Yu in View of Sanz-Pastor .................... 57 1. Independent Claim 1 ................................................................ 58 2. Claim 10: “The system of claim 1, wherein the relevant AR object is caused to be rendered within an overlapping augmented reality among multiple AR capable devices.” ....... 64 3. Claim 11: “The system of claim 10, wherein the overlapping augmented reality comprises a team-based augmented reality.” .................................................................. 65 4. Claim 15: “The system of claim 1, wherein the relevant AR object is caused to be rendered according to a haptic format.” .................................................................................... 65 5. Dependent Claims 5-9, 18, 22-23, 27-29, 34, 36, and 38, and Independent Claim 43 ....................................................... 66 D. Ground 3: Obviousness of Claims 1, 5-11, 15, 18, 22-29, 34- 36, 38, 43 Over Yu in View of Sanz-Pastor, in Further View of Mullen................................................................................................. 67 1. Claim 8: “The system of claim 1, wherein the relevant AR object is caused to be rendered within an AR game.”....... 67 -iii- TABLE OF CONTENTS (continued) Page 2. Claim 24: “The system of claim 1, wherein the AR server is further configured to enable the AR capable device to conduct a commercial transaction with a commerce engine.” .................................................................................... 69 3. Claim 25: “The system of claim 24, wherein the commercial transaction includes an exchange of virtual currency.” ................................................................................. 70 4. Claim 26: “The system of claim 24, wherein the commercial transaction includes a transfer of real-world funds.” ...................................................................................... 71 5. Dependent claim 35 ................................................................. 71 VII. CONCLUSION ............................................................................................. 76 -iv- Petition for Inter Partes Review of U.S. Patent No. 10,403,051 B2 List of Exhibits Ex. No. Description of Document 1001 U.S. Patent No. 10,403,051 (“’051 patent” or “’051”) 1002 Declaration of Dr. Michael Zyda (“Zyda”) 1003 U.S. Patent Application Publication No. 2010/0066750 A1 to Yu et al. (“Yu”) 1004 U.S. Patent Application Publication No. 2007/0242131 A1 to Sanz- Pastor et al. (“Sanz-Pastor”) 1005 U.S. Patent Application Publication No. 2006/0105838 A1 to Mullen (“Mullen”) 1006 Reserved 1007 Reserved 1008 Excerpts from Oliver Bimber and Ramesh Raskar, Chapter 1: A Brief Introduction to Augmented Reality, in Spatial Augmented Reality: Merging Real and Virtual World (2005) 1009 Paul Milgram and Fumio Kishino, A Taxonomy of Mixed Reality Visual Displays, IEICE Transactions on Information Systems, E77-D (12):1321-29 (1994) 1010 Jean-Marie Normand et al., A new typology of augmented reality applications, AH ’12 Proceedings of the 3rd Augmented Human Int’l Conference (Mar. 2012) 1011 U.S. Patent No. 3,050,870 (“Heilig”) 1012 Ivan E. Sutherland, A head-mounted three dimensional display, AFIPS ’68 (Fall, Part I): Proceedings of the December 9-11, 1968 Fall Joint Comput. Conf., Part I, pp. 757-64 (1968) ‐i‐ Petition for Inter Partes Review of U.S. Patent No. 10,403,051 B2 List of Exhibits Ex. No. Description of Document 1013 Grégory Maubon, A little bit of history from 2006: Nokia MARA project, https://www.augmented-reality.fr/2009/03/un-petit-peu- dhistoire-de-2006-projet-mara-de-nokia/ 1014 U.S. Patent No. 6,553,310 (“Lopke”) 1015 U.S. Patent Application Publication No. 2002/0044152 (“Abbott”) 1016 Excerpts from Lester Madden, Professional Augmented Reality Browsers for Smartphones,
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