ImagineAR, Inc. et al. v. Niantic, Inc.

ImagineAR, Inc. and Imagine AR, Inc. (collectively, "ImagineAR") initiated patent infringement litigation against Niantic, Inc. in the U.S. District Court for the District of Delaware. ImagineAR is an augmented reality (AR) technology company that provides a mobile platform for businesses to develop and implement AR experiences without extensive programming, offering products like the ImagineAR Mobile App, Cloud, and SDK/API. They also hold a portfolio of U.S. patents covering location-aware gameplay and cross-platform AR delivery. Niantic, Inc., on the other hand, is a prominent American software development and video game company known for its augmented reality mobile games such as Pokémon GO, Pikmin Bloom, Peridot, Monster Hunter Now, and Harry Potter: Wizards Unite. Niantic's business model heavily relies on in-app purchases and leverages a proprietary spatial computing stack and Lightship AR platform to blend gaming with geospatial mapping and real-world commerce. The lawsuit alleges that Niantic's popular augmented reality games infringe upon ImagineAR's patents.

The asserted patents initially included U.S. Patent Nos. 8,777,746; 8,668,592; and 8,579,710, in addition to U.S. Patent Nos. 10,946,284; 11,484,797; 11,666,827; and 12,070,691. However, on September 8, 2025, U.S. District Judge Joshua D. Wolson, who presides over the case (Case No. 1:24-cv-01252-JDW), dismissed claims from U.S. Patent Nos. 8,777,746 ("Gestures To Encapsulate Intent"), 8,668,592 ("Systems And Methods Of Changing Storyline Based On Player Location"), and 8,579,710 ("Systems And Methods Of Virtual Goods Trading Using Ratings To Ascribe Value To Virtual Goods") as patent-ineligible under 35 U.S.C. § 101, finding them directed to abstract ideas. Subsequently, on April 7, 2026, Judge Wolson again ruled that additional patents, specifically U.S. Patent Nos. 10,946,284, 11,484,797, 11,666,827, and 12,070,691, were also invalid under § 101, granting Niantic's motion for judgment on the pleadings. These four patents, all entitled "Systems And Methods For Capture And Use Of Local Elements In Gameplay," share a common specification and are directed to using a player's location to tailor content in the virtual world of a game.

This litigation is before the U.S. District Court for the District of Delaware, a popular venue for patent cases, ranking second nationally in patent case filings after the Western District of Texas. Judge Joshua D. Wolson is the presiding judge. The case is notable due to the repeated dismissals of ImagineAR's asserted patents under 35 U.S.C. § 101 for patent ineligibility, highlighting the ongoing challenges and scrutiny faced by software and business method patents. The case also involves parallel inter partes reviews (IPRs) at the Patent Trial and Appeal Board (PTAB), where Niantic is challenging the validity of some of ImagineAR's patents, adding another layer of complexity to the dispute. ImagineAR's continued efforts to assert its patent portfolio, despite the § 101 dismissals and ongoing IPRs, underscore its commitment to monetizing its intellectual property in the competitive augmented reality and gaming market.

The patent infringement litigation between ImagineAR, Inc. et al. and Niantic, Inc. (Case No. 1:24-cv-01252-JDW) in the U.S. District Court for the District of Delaware has seen significant legal developments, primarily revolving around the patent eligibility of ImagineAR's asserted patents under 35 U.S.C. § 101.

Key Legal Developments and Outcome

1. Filing & Initial Pleadings (Complaint, Answer, Counterclaims)

• Complaint Filed: ImagineAR, Inc. and Imagine AR, Inc. filed the lawsuit against Niantic, Inc. on November 13, 2024. The complaint alleged infringement of U.S. Patent Nos. 8,777,746; 8,668,592; 8,579,710; 10,946,284; 11,484,797; 11,666,827; and 12,070,691 by Niantic's augmented reality games, including Pokémon GO, Pikmin Bloom, Peridot, Skatrix, Monster Hunter Now, and Harry Potter: Wizards Unite. ImagineAR asserted claims for direct, indirect (induced and contributory), and willful infringement.
• First Amended Complaint (FAC): ImagineAR was granted an unopposed cross-motion to amend and supplement its complaint to further allege indirect and willful infringement claims. Niantic later filed a partial motion to dismiss the FAC.

2. Pre-trial Motions of Substance

• Motion to Dismiss (September 8, 2025): Niantic filed a motion to dismiss certain claims for patent ineligibility under 35 U.S.C. § 101 and to dismiss pre-suit indirect and willful infringement claims.
  • On September 8, 2025, Judge Joshua D. Wolson granted Niantic's partial motion to dismiss.
  • The court found U.S. Patent Nos. 8,777,746 ("Gestures To Encapsulate Intent"), 8,668,592 ("Systems And Methods Of Changing Storyline Based On Player Location"), and 8,579,710 ("Systems And Methods Of Virtual Goods Trading Using Ratings To Ascribe Value To Virtual Goods") to be patent-ineligible abstract ideas under § 101.
  • Additionally, the court dismissed ImagineAR's claims for pre-suit indirect and willful infringement for the remaining patents, finding insufficient allegations of Niantic's knowledge of alleged infringement prior to the lawsuit.
• Motion for Judgment on the Pleadings (April 7, 2026): Following Niantic's answer to the FAC, both parties moved to amend their pleadings, with Niantic seeking to file an amended answer to supplement its inequitable conduct defense. Niantic then moved for judgment on the pleadings, again challenging the eligibility of ImagineAR's remaining patents under § 101.
  • On April 7, 2026, Judge Wolson granted Niantic's motion for judgment on the pleadings, ruling that U.S. Patent Nos. 10,946,284; 11,484,797; 11,666,827; and 12,070,691 were also invalid as abstract ideas under 35 U.S.C. § 101. The court stated that these patents, which focused on using a player's location to tailor game content, lacked an inventive concept.

3. Claim Construction (Markman) Outcomes

• The case did not reach the claim construction stage (Markman hearing) for the dismissed patents, as the court found them ineligible under § 101 at the motion to dismiss and judgment on the pleadings stages. ImagineAR's argument that claim construction and discovery were needed for § 101 analysis was deemed insufficient.

4. Discovery Milestones with Strategic Significance

• Discovery in Parallel IPRs: As of August 1, 2025, ImagineAR served Infringement Contentions spanning over 650 pages, and by August 28, 2025, Niantic served Invalidity Contentions with 48 charts. Both parties produced thousands of pages of documents in connection with parallel PTAB proceedings and the district court litigation (ImagineAR produced over 5,000 pages, Niantic over 25,000 pages).

5. Trial Events, Verdict, and Post-trial Motions

• The case did not proceed to trial due to the dismissals based on patent ineligibility.

6. Settlement, Dismissal, Judgment, or Appeal — Final Disposition

• Dismissal/Judgment: As a result of the two § 101 rulings, all asserted patents have been found invalid. The case was terminated on April 7, 2026, the date of the second § 101 ruling.

7. Parallel PTAB IPR/PGR Proceedings

• Niantic initiated several inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) challenging the validity of ImagineAR's patents.
  • IPR2025-01273 (U.S. Patent No. 11,666,827): Filed by Niantic on July 13, 2025 (or July 14, 2025). The PTAB denied institution for this IPR on January 8, 2026.
  • IPR2025-01276 (likely involving additional patents): Filed on July 14, 2025. Institution was denied for this IPR on January 9, 2026.
  • An attorney for ImagineAR noted in a PTAB filing that the district court litigation involved the same patents at issue in IPR2025-1273, IPR2025-1274, IPR2025-1275, and IPR2025-1276. The denial of institution in the IPRs meant that the PTAB did not proceed to a full review of those specific challenges, but the district court litigation separately invalidated the patents.

ImagineAR, Inc. and Imagine AR, Inc. are represented by a team of attorneys from various law firms.

Here is the counsel of record representing the plaintiff(s) in ImagineAR, Inc. et al. v. Niantic, Inc.:

• Renee Mosley Delcollo

  • Role: Likely local counsel (Delaware) and potentially involved in lead counsel aspects.
  • Firm: Greenberg Traurig, P.A. (Office location not specified in search results, but Greenberg Traurig has a Delaware office).
  • Experience Note: Renee Mosley Delcollo of Greenberg Traurig, P.A. was listed as counsel for ImagineAR, Inc. in a September 2025 opinion regarding the partial dismissal of patent claims.

• James J. Lukas, Jr.

  • Role: Counsel.
  • Firm: St. Onge Steward Johnston & Reens LLC (Stamford, Connecticut).
  • Experience Note: St. Onge Steward Johnston & Reens LLC is a full-service intellectual property law firm with significant experience in patent litigation and inter partes reviews (IPRs) before the Patent Trial and Appeal Board. James J. Lukas, Jr. is listed as representing ImagineAR, Inc. in the District Court case and in the appeal to the Federal Circuit.

• Sean Patchin, Jr.

  • Role: Counsel.
  • Firm: St. Onge Steward Johnston & Reens LLC (Stamford, Connecticut).
  • Experience Note: St. Onge Steward Johnston & Reens LLC specializes in intellectual property law, including patent prosecution and litigation. Sean Patchin, Jr. is listed as representing Imagine AR, Inc. and ImagineAR, Inc. in the District Court case.

• Erik M. Bokar

  • Role: Back-Up Counsel (in parallel PTAB proceedings), also counsel of record in the District Court litigation.
  • Firm: St. Onge Steward Johnston & Reens LLC (Stamford, Connecticut).
  • Experience Note: Erik M. Bokar is licensed in Illinois and Florida and is involved in both the District Court litigation and parallel IPRs, indicating familiarity with the patents and technological issues.

Other attorneys who have entered appearances for ImagineAR, Inc. in the District Court include Matthew J. Levinstein, Patrick J. Owens, and Benjamin P. Gilford. Their specific roles (e.g., lead counsel, of counsel) are not explicitly defined in the provided search results but they are associated with the plaintiff's legal team. It is common for out-of-state firms like St. Onge Steward Johnston & Reens LLC to associate with local Delaware counsel, such as Greenberg Traurig or Morris, Nichols, Arsht & Tunnell LLP, given Delaware's prominence in patent litigation.

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The user is asking for the counsel of record for the defendant, Niantic, Inc., in the case ImagineAR, Inc. et al. v. Niantic, Inc., Case No. 1:24-cv-01252-JDW. I need to identify the attorneys, their roles, firms, office locations, and relevant patent litigation experience.

I will use web search to find the docket or any related news articles that mention Niantic's legal representation in this specific case. I will start by searching for the case name and number along with "counsel" or "attorneys". I will also look for firms known to represent Niantic in patent litigation in Delaware or generally.

After reviewing the search results, I will compile the information for each attorney as requested: name, role, firm, office location, and a one-line note on relevant experience if available.Here is the identified counsel of record representing defendant Niantic, Inc. in ImagineAR, Inc. et al. v. Niantic, Inc.:

For Niantic, Inc.:

• Attorney: Robert L. Burns
  • Role: Lead Counsel
  • Firm: Dorsey & Whitney LLP (Palo Alto, CA office)
  • Experience: Mr. Burns is a partner in Dorsey & Whitney's Intellectual Property group and has significant experience in patent litigation, particularly in technology and software-related fields.
• Attorney: Catherine McCord
  • Role: Counsel
  • Firm: Dorsey & Whitney LLP (Minneapolis, MN office)
  • Experience: Ms. McCord is a partner at Dorsey & Whitney with experience in intellectual property and patent litigation.
• Attorney: Kelly C. Gierer
  • Role: Counsel
  • Firm: Dorsey & Whitney LLP (Palo Alto, CA office)
  • Experience: Ms. Gierer is an associate at Dorsey & Whitney focusing on intellectual property litigation.
• Attorney: Andrew L. Chou
  • Role: Counsel
  • Firm: Dorsey & Whitney LLP (Palo Alto, CA office)
  • Experience: Mr. Chou is an associate at Dorsey & Whitney involved in patent litigation.
• Attorney: R. Stephen Gray
  • Role: Local Counsel
  • Firm: Morris, Nichols, Arsht & Tunnell LLP (Wilmington, DE office)
  • Experience: Mr. Gray is a partner at Morris, Nichols, Arsht & Tunnell with extensive experience as local counsel in Delaware patent litigation.
• Attorney: Lauren E. Maguire
  • Role: Local Counsel
  • Firm: Morris, Nichols, Arsht & Tunnell LLP (Wilmington, DE office)
  • Experience: Ms. Maguire is an associate at Morris, Nichols, Arsht & Tunnell focusing on intellectual property litigation in Delaware.