PTAB Affirms Patent Eligibility of Virtual Reality Advertising Claims

In a decision issued last month, the Patent Trial and Appeal Board reversed the final rejection of all the pending claims in U.S. Application No. 12/628,383.  The claims at issue are directed to evaluating an effectiveness of an advertisement in a virtual reality universe of a multiplayer online game.  In particular, the claimed invention involves evaluating whether a proximity and direction of a user's avatar enables the avatar to effectively view a virtual advertisement and, based on this evaluation, providing a virtual barrier (e.g., a virtual landscape element) that induces the avatar to navigate towards viewing the advertisement.  The claims had been rejected under 35 U.S.C. § 101 as reciting patent ineligible subject matter in the form of an abstract idea of organizing human activities.  Representative claim 1 is as follows:

1.  A method for navigating an avatar into a proximity and directionality favorable for viewing advertising content in a Virtual Universe (VU) of a multiplayer online game managed by at least one server, the method comprising:
    registering, by the at least one server, a visit by the avatar to a region of the VU that includes a target advertising content;
    determining, by the at least one server, a proximity to the target advertising content by the avatar;
    determining, by the at least one server, an avatar directionality of the avatar with respect to the target advertising content;
    determining, by the at least one server, a time with respect to which the avatar may be exposed to the target advertising content in the region;
    assigning, by the at least one server, at least one score to the visit, the proximity, the directionality, and the time;
    calculating, by the at least one server, an effectiveness score based on the at least one score;
    evaluating, by the at least one server, an effectiveness of the target advertising content by comparing the effectiveness score to a predetermined scale;
    automatically constructing, by the at least one server, a barrier blocking the avatar from moving away from the target advertising content based on the evaluating, the barrier comprising a landscape element; and
    inducing, by the at least one server, using the barrier, the avatar to navigate in such a way that the proximity and the avatar directionality of the avatar favor viewing of the target advertising content.

In considering the Alice framework and reversing the § 101 rejection, the Board summarized positions of both parties, first noting the Appellants' argument that the nature of virtual reality technology makes it so the claimed invention cannot be performed as an abstract idea in one's head.  The Board also noted the Examiner's conclusion that the claimed invention is directed towards a business model for advertising to force a video game user to view an advertisement.  In reaching this conclusion, the Examiner reasoned in his Answer that "the claimed virtual universe should be considered an environment for a video game on a generic computer network, using conventional technology" and that "[n]o specialized machinery is disclosed the specification or mandated in the claims."

But the Board sided with the Appellant.  Citing the Federal Circuit's decision in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016), the Board concluded that the plain focus of the claims is "not on economic or other tasks for which a computer is used in its ordinary capacity," but rather "on an improvement to computer functionality itself," the improvement being navigation within the virtual universe.  The Board therefore refused to sustain the rejection of the claims under § 101.

Interestingly, however, one Board member disagreed with the Board's conclusion and wrote a dissenting opinion in an attempt to emphasize alleged differences between the claimed invention in the present case and that in Enfish.  The dissent first addressed Enfish:

The invention of Enfish was "directed to an innovative logical model for a computer database."  Enfish, 822 F.3d at 1330.  In contrast to prior-art databases that were based upon a relational model, Enfish's invention was directed to a self-referential model wherein all information of the database appears in a single table, and given rows of the table reference other rows of that same table.  Id. at 1332-33.

Further, the dissent noted how "[t]he Enfish court expressly noted various technological improvements to the computer functionality that the invention provided."

But the dissent did not agree that the present invention provided any such improvements.  Addressing the claimed invention, the dissent noted Appellants' argument in the Appeal Brief that the invention is directed to tangible technology and that "embodiments of the invention overcome a problem specifically arising in computing technology, as only in a computerized virtual universe, could there be an issue as to how to induce an avatar to navigate in such a way that it views an electronic advertisement in such virtual universe," and concludes that this argument overlooks Appellants' admission that it was known to provide avatars and advertisements in virtual universes.  The dissent then went on:

Appellants do not provide reasonable evidence that constructing barriers in virtual universes was technologically challenging in any way or that automatically evaluating the effectiveness of the advertisements provided any technological improvement either to the virtual universes or to the operation of the servers in which the virtual universes reside.  . . .  Appellants' invention is better characterized, then, as one that uses conventional navigation technology to improve upon the effectiveness of known virtual-universe advertising techniques.

The dissent thus agreed with the Examiner and, despite acknowledging the inherent computerization of virtual reality technology, concluded that "the invention is directed to the abstract idea of improving the effectiveness of advertising" using conventional technology without significantly more.

The Enfish court distinguished claims that focus on a specific improvement to computer functionality itself from those reciting economic or other tasks for which a computer is used in its ordinary capacity.  Here, the dissent believed the claims to be in the latter category.  To this point, perhaps most notable of the statements made in the dissenting opinion is the final one:  "[T]he record indicates that the invention is an improved advertising idea performed with a computer – not an improvement to the operation of a computer itself" (emphasis in opinion).  This is a compelling point, and one that inherently calls for a careful analysis when comparing claims with those in Enfish.

Ex parte Gershfang (PTAB 2018)
Before Administrative Patent Judges Carl W. Whitehead Jr., Bradley W. Baumeister, and Joseph P. Lentivech
Decision on Appeal by Administrative Patent Judge Whitehead Jr.