NantWorks, LLC v. Niantic, Inc.

Background

NantWorks sued Niantic for allegedly infringing three patents through Niantic’s augmented-reality game applications Pokémon Go and Harry Potter: Wizards Unite. The applications use a mobile device’s camera, global-positioning system, and augmented-reality platform to place virtual objects into digital representations of the user’s surroundings.

The dispute in this order concerned U.S. Patent No. 10,664,518, which the opinion describes as covering the mapping of augmented-reality objects and their appearance on a device’s display. Niantic previously sought judgment on the pleadings, arguing that the patent claims were directed to an abstract idea and lacked an inventive concept. The court granted that motion in an earlier order.

Request for immediate appeal

NantWorks asked the court to certify the earlier order for immediate appeal under Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b). Rule 54(b) can permit entry of a final judgment on fewer than all claims in a case when there is no just reason to delay. Section 1292(b) allows certification of certain nonfinal orders when they involve a controlling legal question, there is substantial disagreement about that question, and an immediate appeal may materially advance the end of the litigation.

NantWorks generally argued that the earlier order was effectively final as to the ’518 patent and that staying the case during an appeal would be efficient. Niantic opposed an immediate appeal and relied on the policy against piecemeal appellate review.

Court’s analysis

The court held that Section 1292(b)’s requirements were not satisfied. In particular, the court found no substantial ground for disagreement about the earlier order. It noted that NantWorks did not address the earlier order’s conclusion that the ’518 patent claims established only novelty, even when considered in light of the patent specification and the complaint’s factual allegations. The court also noted that the parties identified no Federal Circuit decision accepting a Section 1292(b) appeal from a Rule 12 patent-invalidity order.

The court separately considered Rule 54(b). It found that there was no need for immediate appeal. The ’518 patent was the second patent the court had invalidated, and NantWorks had not sought immediate appeal regarding the first patent. The court also had construed some claim terms shared by the ’518 patent and the remaining patent, including terms involving the general augmented-reality technology. In the court’s view, that overlap favored having the Federal Circuit consider one appeal rather than conducting piecemeal review.

Disposition

The court denied an immediate appeal of the Rule 12(c) order. The order resolved ECF No. 150.