NantWorks, LLC v. Niantic, Inc.

Background

NantWorks sued Niantic for allegedly infringing three patents through Niantic’s augmented-reality game apps Pokémon Go and Harry Potter: Wizards Unite. The opinion states that one patent remained in the case: U.S. Patent No. 10,403,051, referred to as the ’051 patent. The patent concerns incorporating virtual objects into a digital representation of the scene around a device.

After expert disclosures, Niantic moved to strike certain infringement theories in Matthew Turk’s opening expert report. Niantic argued that those theories had not been disclosed in NantWorks’ infringement contentions, which are claim charts that must identify specifically where and how each limitation of each asserted patent claim appears in an accused product or process under Northern District of California Patent Local Rule 3-1(c).

Paragraphs 134–149

Niantic argued that paragraphs 134–149 improperly introduced a new theory for claim 1 of the ’051 patent. According to Niantic, NantWorks’ infringement contentions identified Pokémon Go’s “Map View” functionality and two Map View features: the frequency of Pokémon based on real-world weather and the size and appearance of Pokémon based on the user’s location. The Turk Report instead relied on Pokémon Go’s distinct “Encounters” functionality, in which a user views a Pokémon through a smartphone camera.

NantWorks argued that its contentions disclosed a broader theory: Pokémon Go changes the size and visibility of Pokémon augmented-reality objects based on the user’s location. The court agreed that the contentions were broad enough to cover both Map View and Encounters. It held that the contentions gave fair notice of a theory that users interact with Pokémon objects based on the device’s location and the objects’ attributes. The court therefore denied the motion to strike paragraphs 134–149.

Paragraphs 162–168, 171, and 240

The second dispute concerned claims 22 and 23. Claim 22 requires the determination to alter an augmented-reality object’s presence to depend on time, and claim 23 requires the alteration to change with time. NantWorks’ infringement contentions disclosed time-of-day functionality, including day-versus-night effects and “Spotlight Hours.” The contentions for claims 22 and 23 referred back to the contention for claim 1.

Niantic argued that the Turk Report instead introduced weather-based and “awareness meter” theories. NantWorks responded that the claim 1 contention discussed weather and the relevant determination about altering an object’s presence, so the references to claim 1 covered those theories.

The court held that merely incorporating “claim 1” was too general because claim 1 contained many limitations. The patent local rule required specific identification of where and how each limitation appeared in the accused product. The court concluded that striking the challenged paragraphs would make the litigation fairer.

Disposition

The court granted the motion to strike in part and struck paragraphs 162–168, 171, and 240 of the Turk Report. It denied the motion as to paragraphs 134–149. Judge Laurel Beeler stated that the order resolved ECF No. 228.