The Software IP Report

Patent Claims to 3D Virtual Environment Held Ineligible at Pleadings Stage: Barbaro Technologies, LLC v. Niantic Inc.

Patent claims directed to a 3D virtual game environment were held ineligible on a Rule 12(c) motion for judgment on the pleadings under 35 U.S.C. § 101 and the  Alice/Mayo test. Barbaro Technologies, LLC v. Niantic Inc., Case No. 18-cv-02955-RS (N.D. Cal. May 21, 2020). The plaintiff had alleged that defendants infringed claims of two patents, US Patent 7,373,377 and US Patent 8,228,325. Asserted claims of the ’325 patent were held ineligible.

Claim 1 of the ’325 patent recites:

A computer system for providing a virtual thematic environment, comprising:

at least one memory having at least one program comprising the steps of:

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.

The plaintiff’s first argument was that § 101 invalidity could not be decided pleadings stage. A number of courts recently have shown reluctance to address § 101 at the pleadings stage (for example, see here, here,  here, here, and here). This court simply noted that a Rule 12(c) motion cannot consider facts outside the pleadings, or not construed in a light most favorable to the nonmovant. The court then proceeded to decide the motion in favor of the movant.

Under Alice step one, these claims were directed to an abstract idea because they claimed a result, i.e., that “the user interacts with the three-dimensional virtual thematic environment as a simulated real-world interaction.” The ’325 patent specification disclosed “thousands of embodiments of the claimed result, accomplished by a variety of existing technologies,” but offered no technological improvements. The claims here were distinguishable from those in Enfish, LLC v. Microsoft Corp., (Fed. Cir. 2016), Thales Visionix, Inc. v. United States (Fed. Cir. 2017), and Visual Memory, LLC v. NVIDIA Corp. (Fed. Cir. 2017), because the ’325 patent claims recited a result, “simulated real-world interaction ,” rather than being directed to how the result was achieved.

The court emphasized that the basis for finding the claims directed to an abstract idea was not that “they are directed to software, as opposed to hardware.” Enfish clearly states that claims to software can be non-abstract. The claims here were abstract because “computers are simply invoked as a tool for solving a problem that has predated them: integrating real-world information about a user into a virtual model.”

Under step two of the Alice test, there was no saving inventive concept. The plaintiff argued that the claims “solve a uniquely technical problem: integrating information about the real world into a virtual world.” But the court noted that modeling real-world locations, and integrating people into such models, “long predates computers.” The ’325 patent simply invoked conventional technology and applied it to an abstract idea.

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