Untitled case

This patent infringement litigation, Case No. 1:24-cv-01252, was filed in the District of Delaware by ImagineAR, Inc. and its licensee Imagine AR, Inc. (collectively, "IAR"), against Niantic, Inc. d/b/a Niantic Labs ("Niantic"). IAR operates in the augmented reality (AR) technology space, particularly for virtual gameplay. Niantic is a well-known operating company that develops and publishes popular augmented reality mobile games, including Pokémon GO, Pikmin Bloom, Peridot, Skatrix, Monster Hunter Now, and Harry Potter: Wizards Unite, which are the accused products and services in this case. IAR initially asserted several patents, but as of the latest significant ruling, the case focused on U.S. Patent No. 10,946,284, titled "Systems And Methods For Capture And Use Of Local Elements In Gameplay," along with 11,484,797, 11,666,827, and 12,070,691. The '284 patent broadly describes a computer-implemented method that enables virtual gameplay on a computing device, allowing players in real-world geographic locations to interact with virtual characters and other players within the video game environment.

The case was heard in the United States District Court for the District of Delaware by Judge Joshua D. Wolson. The District of Delaware is a highly significant venue for patent litigation, largely due to the 2017 Supreme Court decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, which restricts patent venue primarily to where a corporate defendant is incorporated or has a regular and established place of business. Given that many major U.S. technology and pharmaceutical companies are incorporated in Delaware, this district has become a dominant forum, valued for its experienced patent judiciary and sophisticated precedent in complex technical litigation.

This case is notable for several reasons, particularly concerning patent eligibility under 35 U.S.C. § 101, following the Alice Corp. v. CLS Bank International framework. Judge Wolson issued a memorandum opinion on September 8, 2025, finding several of IAR's asserted patents abstract and lacking an inventive concept, and dismissing pre-suit indirect and willful infringement claims for the remaining patents. Subsequently, in a memorandum opinion dated April 7, 2026, the court granted Niantic's motion for judgment on the pleadings, ruling for a second time that IAR's patents, including U.S. Patent No. 10,946,284, were invalid under §101 because they were directed to abstract ideas without an inventive concept. This ruling effectively terminated the case at the district court level. Additionally, Niantic initiated parallel inter partes review (IPR) proceedings against ImagineAR's patents at the Patent Trial and Appeal Board (PTAB), including IPR2025-01273, IPR2025-01274, IPR2025-01275, and IPR2025-01276. This highlights a common defense strategy of challenging patent validity both in district court and before the PTAB. The district court's decision has been appealed to the Federal Circuit, further underscoring the case's significance for patent eligibility in the augmented reality and gaming industries.

Key Legal Developments and Outcome

This patent infringement litigation, ImagineAR, Inc. et al. v. Niantic, Inc., Case No. 1:24-cv-01252, has seen several significant legal developments, primarily revolving around patent eligibility under 35 U.S.C. § 101.

Filing & Initial Pleadings

• Complaint Filed (2024-11-13): ImagineAR, Inc. and Imagine AR, Inc. ("IAR") filed suit against Niantic, Inc., alleging infringement of seven patents. The accused products included Niantic's augmented reality games such as Pokémon GO, Pikmin Bloom, Peridot, Skatrix, Monster Hunter Now, and Harry Potter: Wizards Unite. IAR asserted claims for direct, indirect, and willful infringement.
• First Amended Complaint (Undated): IAR later filed a First Amended Complaint (FAC) to supplement its allegations regarding indirect and willful infringement claims.

Pre-Trial Motions of Substance

• Niantic's Partial Motion to Dismiss (Pre-2025-09-08): Niantic filed a partial motion to dismiss the FAC, seeking dismissal of infringement claims for three patents (U.S. Patent Nos. 8,777,746, 8,668,592, and 8,579,710) as invalid under 35 U.S.C. § 101. Niantic also sought to dismiss pre-suit indirect and willful infringement claims for the remaining patents.
• Order Granting Partial Motion to Dismiss (2025-09-08): Judge Joshua D. Wolson granted Niantic's partial motion to dismiss. The court found that three of IAR's patents (U.S. Patent Nos. 8,777,746, 8,668,592, and 8,579,710) were directed to abstract ideas and lacked an inventive concept, rendering them invalid under § 101. Additionally, the court dismissed IAR's claims for pre-suit indirect and willful infringement for the remaining patents, including 10,946,284, finding IAR failed to plausibly allege Niantic's pre-suit knowledge of infringement. This left U.S. Patent Nos. 10,946,284, 11,484,797, 11,666,827, and 12,070,691 as the patents in suit.
• Motion to Compel (2025-09-11): IAR filed a motion to compel discovery, specifically seeking documents related to the "Skatrix" product. The court largely granted this motion, ordering Niantic to produce technical documents (except for Skatrix-related ones), source code, and supplemental responses to certain interrogatories by September 30, 2025. However, the court denied compelling Skatrix documents, finding IAR had not demonstrated Niantic's possession, custody, or control over them.
• Niantic's Motion for Judgment on the Pleadings (Pre-2026-04-07): Niantic filed a motion for judgment on the pleadings, arguing that the remaining Patents-In-Suit (U.S. Patent Nos. 10,946,284, 11,484,797, 11,666,827, and 12,070,691) were also invalid under 35 U.S.C. § 101.
• Order Granting Judgment on the Pleadings (2026-04-07): Judge Wolson granted Niantic's motion for judgment on the pleadings, finding for a second time that IAR's patents, including U.S. Patent No. 10,946,284, were invalid under § 101 because they were directed to abstract ideas without an inventive concept. This ruling effectively terminated the case at the district court level.

Discovery Milestones

• Infringement Contentions Served (2025-08-01): IAR served its Infringement Contentions on Niantic, including over 650 pages of infringement charts for the patents at issue in the parallel IPRs.
• Invalidity Contentions Served (2025-08-28): Niantic served its Invalidity Contentions on IAR, which included 48 invalidity charts spanning over 5,000 pages, citing prior art such as Kolo and Zyda.

Final Disposition or Present Posture

• Appeal to Federal Circuit (2026-04-22): IAR has appealed the District Court's decision to the United States Court of Appeals for the Federal Circuit. The appeal is docketed as Case No. 26-1720.

Parallel PTAB IPR/PGR Proceedings

Niantic initiated parallel inter partes review (IPR) proceedings against ImagineAR's patents at the Patent Trial and Appeal Board (PTAB). These IPRs involved the patents asserted in the district court litigation.

• IPR Petitions Filed (2025-07-14): Niantic filed petitions for inter partes review for U.S. Patent Nos. 10,946,284 (IPR2025-01274), 11,484,797 (IPR2025-01275), 11,666,827 (IPR2025-01273), and 12,070,691 (IPR2025-01276).
• Niantic's Stipulation for Estoppel (2025-09-04): Niantic stipulated that if the PTAB instituted an IPR for these patents, it would be bound by the full scope of estoppel under 35 U.S.C. § 315(e)(2) in the district court litigation, meaning it would forgo invalidity grounds in the district court that were raised or reasonably could have been raised in the IPR.
• Director Discretionary Decision (2025-11-19, 2025-11-20): A Director Discretionary Decision to Refer was made for IPR2025-01273 and IPR2025-01276.
• Institution Decisions Denied (2026-01-08, 2026-01-09): The PTAB denied institution for IPR2025-01273 (concerning U.S. Patent No. 11,666,827) on January 8, 2026, and for IPR2025-01276 (concerning U.S. Patent No. 12,070,691) on January 9, 2026. This suggests the PTAB did not proceed with a full review of the challenged claims in these particular IPRs.

Plaintiff ImagineAR, Inc. and its licensee Imagine AR, Inc. (collectively, "IAR") are represented by a team of attorneys, including lead and local counsel.

Lead Counsel:

• James J. Lukas, Jr. (Lead Counsel)

  • Firm: Faegre Drinker Biddle & Reath LLP, Philadelphia, Pennsylvania (based on firm's general presence and common practice for lead counsel to be outside of Delaware for District of Delaware cases).
  • Experience: Faegre Drinker's patent litigation team has extensive experience representing both plaintiffs and defendants in complex patent infringement cases across various technologies and industries in federal courts, including the Federal Circuit.

• Sean Patchin, Jr. (Lead Counsel)

  • Firm: Faegre Drinker Biddle & Reath LLP, Philadelphia, Pennsylvania (based on firm's general presence and common practice for lead counsel to be outside of Delaware for District of Delaware cases).
  • Experience: Faegre Drinker's patent litigation team is known for handling sophisticated intellectual property matters.

Local Counsel:

• Stephen B. Brauerman (Local Counsel)

  • Firm: Bayard, P.A., Wilmington, Delaware.
  • Experience: Mr. Brauerman heads Bayard's IP litigation group and regularly represents clients from the pharmaceuticals and technology sectors in patent infringement cases, with a strong reputation for serving as Delaware counsel in complex patent litigation in the District of Delaware.

• Ronald P. Golden III (Local Counsel)

  • Firm: Bayard, P.A., Wilmington, Delaware.
  • Experience: Recognized as a "Next Generation" attorney in patent litigation, Mr. Golden is emerging as a leader in the field and is part of Bayard's team known for its local expertise in technically complex patent litigation.

It appears Benjamin Patrick Gilford may also have sought to appear pro hac vice in this case.

Niantic, Inc. d/b/a Niantic Labs is represented by a team of attorneys, including lead and local counsel.

Lead Counsel:

• Jeffrey T. Castellano

  • Role: Lead Counsel
  • Firm: DLA Piper (formerly) / Castellano PLLC (current) (His profile indicates he worked at DLA Piper and subsequently founded Castellano PLLC)
  • Experience: Mr. Castellano has over 15 years of experience litigating patent cases as lead counsel in various courts and agencies, including the Federal Circuit, ITC, and USPTO. His experience spans diverse technologies like pharmaceuticals, consumer electronics, telecommunications, software, and Internet technologies. He is also a registered patent attorney experienced in patent drafting, prosecution, and post-grant proceedings.

• Sarah E. Staudt

  • Role: Lead Counsel (This is an inference based on typical litigation team structures for a firm representing a defendant like Niantic, and the absence of specific "local counsel" designation for her in available public information related to the district court case itself. However, information about her professional background does not indicate specific patent litigation experience.)
  • Firm: Unspecified in the context of this patent litigation, but her publicly available experience indicates a background in criminal legal system reform and policy, not patent litigation. It is possible this "Sarah Staudt" is not involved in this case, or her role is non-litigation related. There is a "Jonathan D. Staudt" who is a patent attorney at Cantor Colburn, with experience in patent prosecution and various technological fields, but his firm is not typically associated with Niantic in this case. Another "Carianne S. Staudt" focuses on business organization and tax law. Given the conflicting information and lack of direct evidence of "Sarah E. Staudt" being involved in this specific patent litigation, her inclusion as lead counsel is highly uncertain.

Local Counsel:

• Michael J. DeRita
  • Role: Local Counsel (Inferred, as it is common for larger firms to have local counsel in Delaware for district court cases).
  • Firm: Appears to be an Assistant General Counsel at AECOM, with previous experience in civil litigation, not specifically patent litigation. Similar to Sarah Staudt, his direct involvement in this specific patent litigation as a local counsel is not strongly supported by readily available public information.

Note on conflicting information: The search results for "Sarah E. Staudt" and "Michael J. DeRita" primarily reveal individuals with experience outside of patent litigation. While it's common for large companies like Niantic to have extensive legal teams, including in-house counsel, specific roles in this patent litigation are not clearly defined for these individuals in publicly accessible legal news or dockets related to this case. There is a potential for common name confusion, especially with "Sarah Staudt" given multiple legal professionals with that name in different practice areas. The most reliably sourced information points to Jeffrey T. Castellano as lead counsel, given his strong patent litigation background and association with Delaware courts.