IP Law Daily, PATENT—D. Del.: Video game system patents succumb to invalidity challenges, (Apr 10, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The district court found that the patent claims were directed to the abstract idea and lacked any inventive concept.

The federal district court in Delaware, granted judgment on the pleadings in favor of the seller of video games because claims in each of the patents were invalid. The district court found that the patent claims relating to using a player’s location to tailor content in the virtual world of a game were abstract and non-inventive (Imaginear, Inc. v. Niantic, Inc. d/b/a Niantic Labs, No. 1:24-cv-01252-JDW (D. Del. Apr. 7, 2026)).

Background. ImagineAR, Inc. and Imagine AR, Inc. (collectively, IAR) were the owner and licensee of various patents, including U.S. Patent Nos. 10,946,284 (’284 Patent); 11,484,797 (’797 Patent); 11,666,827 (’827 Patent); and 12,070,691 (’691 Patent) (together, Patents-In-Suit). The Patents-In-Suit are directed to using a player’s location to tailor content in the virtual world of a game. IAR brought suit for infringement against Niantic, Inc. (Niantic), alleging that Niantic infringed one or more claims of the Patents-In-Suit by making, using, selling, offering for sale in the United States, and/or importing into the United States, video games including Pokémon GO, Pikmin Bloom, Peridot, Skatrix, Monster Hunter Now, and Harry Potter: Wizards Unite. In its First Amended Complaint (FAC), IAR asserted claims against Niantic for direct infringement, indirect infringement (including both induced and contributory infringement), and willful infringement. Niantic moved to dismiss claims arising under U.S. Patents Nos. 8,579,710 (’710 patent), 8,777,746 (’746 patent), and 8,668,592 (’592 patent) on the ground that each of these three patents was invalid for being directed to a patent-ineligible abstract idea, and moved to dismiss the pre-suit damages claims for indirect and willful infringement of the remaining patents. The district court granted Niantic’s motion to dismiss and dismissed IAR’s claims for pre-suit indirect and willful infringement of the Patents-In-Suit. The district court also determined that three other IAR patents were invalid under 35 U.S.C. § 101.

After Niantic answered the FAC, both Parties moved to amend their respective pleadings. Niantic moved to file an amended answer to supplement its inequitable conduct defense, and IAR moved to file a Second Amended Complaint to allege Niantic’s infringement of two additional patents and to include additional information about Niantic’s pre-suit knowledge of the Patents- In-Suit. Both motions remain pending. Niantic has also moved for judgment on the pleadings, asserting that the Patents-In-Suit are invalid under 35 U.S.C. § 101. IAR opposed the motion.

Claims are representative. The district court determined that claim 1 of the ’284 Patent is representative of the remaining claims in that patent and the claims in the other Patents- In-Suit.

Patent eligibility. In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the United States Supreme Court established a two-step framework for determining patent eligibility under 35 U.S.C. § 101. First, a court must ascertain whether the claims at issue are directed to a patent-eligible concept, and not, inter alia, an abstract idea. If the claims do not pass Step One, the patent may still qualify for eligibility at Step Two if the claim elements, both individually and as an ordered combination, present an inventive concept.

Abstract idea. The district court found that Claim 1 focuses on tailoring content based on a player’s location. The language of Claim 1 also focuses on incorporating a player’s geographic location into the virtual world during gameplay. Thus, Niantic’s characterization of Claim 1 of the ’284 Patent as tailoring content based on a player’s location is apt.

IAR contended that Claim 1 is directed to a “technical solution to the technological problem of incorporating a player’s real-world location and its local elements into virtual gameplay,” but it never identified an alleged technological problem. The district court also noted that in its prior decision invalidating the ’592 Patent, it relied on the Federal Circuit’s decision in Intell. Ventures I LLC v. Cap. One Bank, 792 F.3d 1363 (Fed. Cir. 2015) to conclude that providing tailored content based upon the location of the individual—is an abstract idea. The district court found no reason to depart from that conclusion because claim 1 just invokes standard computing devices and other components like location sensors, storage means, and databases as “tools for solving a problem that has predated them.” Further, the “local element script” limitation in Claim 1 is not talismanic language that transforms an otherwise abstract idea into a patent-eligible concept. Accordingly, the district court determined that Claim 1 is directed to an abstract idea.

Inventive concept. At the second step, the district court determined that the Patents-In-Suit lacked an inventive concept. The district court noted that in computer-implemented inventions like the Patents-In-Suit, “the computer must perform more than well-understood, routine, conventional activities previously known to the industry. However, the claimed computer device in Claim 1 does not. Instead, Claim 1 recites generic computer components performing routine functions—i.e., a “computing device” communicating with other components, providing access to a video game, using a “location sensor” to detect a location, storing that information, creating an executable script, retrieving information from a “database,” and actuating the script (or not) in response to other data.

IAR contended that the specification describes Claim 1’s limitations as inventive features, but the record does not support that assertion. Likewise, the ordered combination of these limitations does not represent an inventive concept. Instead, Claim 1 recites a routine ordering of steps—gathering, storing, creating, and using information to achieve a desired result.

The district court also found IAR’s reliance on the ‘284 Patent’s prosecution history unavailing. In its attempt to overcome the patent examiner’s rejection based on Section 101, it argued that the claims were patent-eligible because they “are related to a new and original type of game with a new mechanic.” However, the district court noted that even if the claims are novel, they still represent an abstract idea, and novelty alone does not make them eligible for a patent under Section 101.

Therefore, the claims in each of the ’284, ‘797, ‘827, and ‘691 Patents were invalid because they were abstract and non-inventive. Accordingly, Niantic was entitled to judgment on the pleadings.

The Case is No. 1:24-cv-01252-JDW.

Judge: Wolson, J.

Attorneys: Renee Mosley Delcollo (Greenberg Traurig, P.A) for ImagineAR, Inc. Kelly E. Farnan (Richards, Layton & Finger, PA) for Niantic, Inc.

Companies: ImagineAR, Inc.; Niantic, Inc.

Cases: Patent DelawareNews