By Kevin Penton
Law360 (October 31, 2018, 10:35 PM EDT) — The software developer behind Pokemon Go on Wednesday failed to duck an infringement case in Delaware federal court by claiming the geolocation and geotagging patent asserted against it by a patent licensing company was invalid under Alice.
Niantic Inc. did not establish that Blackbird Tech LLC’s patent is abstract under the standard laid out in the U.S. Supreme Court’s 2014 ruling in Alice Corp. v. CLS Bank, according to U.S. District Judge Susan Richard G. Andrews’ opinion on Wednesday. In Alice, the justices ruled that abstract ideas implemented using a computer are not patent- eligible under Section 101 of the Patent Act.
Niantic argued that the patent is abstract because its claims are related to the concepts of displaying, storing, processing or receiving information on different locations, including those in a video game, according to Wednesday’s opinion.
But Judge Andrews wrote that Niantic oversimplified what the patent actually achieves, as it covers a system of taking images of actual locations before integrating those images into a virtual video game system, according to the opinion.
“To the extent that defendant disputes whether a person of ordinary skill in the art would know to display or combine the images as claimed, defendant makes an enablement argument beyond Section 101,” the opinion reads. “Therefore, I find defendant applies an inappropriate level of abstraction such that its description of the claims is ‘untethered from the language of the claims.'”
Because Judge Andrews determined that the patent’s claims are not abstract, he did not reach the second part of the analysis established under Alice on whether the claims cover an inventive concept, according to the opinion.
Blackbird initiated the case against Niantic in December, and after the company amended its complaint in the spring, Niantic filed the motion to dismiss in April, according to court documents.
The patent in suit is U.S. Patent Number 9,802,127.
Blackbird is represented by Stamatios Stamoulis and Richard C. Weinblatt of Stamoulis & Weinblatt LLC and in-house by Wendy Verlander and Christopher Freeman.
Niantic is represented by David E. Moore, Bindu A. Palapura and Stephanie E. O’Byrne of Potter Anderson & Corroon LLP and Darin W. Snyder, Luann L. Simmons, Alexander B. Parker, John X. Zhu and Jianing Liu of O’Melveny & Myers LLP.
The case is Blackbird Tech LLC d/b/a Blackbird Technologies v. Niantic Inc., case number 1:17-cv-01810, in the U.S. District Court for the District of Delaware.
–Editing by Philip Shea.