Unified Patents v. ImagineAR Inc.

This case, Unified Patents v. ImagineAR Inc., IPR2025-01275, involves a challenge to the validity of US patent 11484797 before the Patent Trial and Appeal Board (PTAB). The petitioner, Unified Patents, is a member-based organization focused on deterring what it considers to be assertions of low-quality patents by Non-Practicing Entities (NPEs) or "patent trolls." Unified Patents achieves this by filing inter partes reviews (IPRs) and operates independently of its members, without monetizing transactions through patent purchases or licenses. The patent owner, ImagineAR Inc., is a Canadian technology company specializing in augmented reality (AR) solutions. ImagineAR provides a self-service cloud platform that allows businesses to create and implement AR campaigns for mobile devices without requiring programming expertise. Their offerings include an AR-as-a-Service platform, an SDK, and a mobile application, enabling interactive experiences that blend real and digital worlds.

The patent at issue, US Patent 11484797, is titled "Enabling Virtual Gameplay Based on Real World Local Elements." It describes systems and methods designed to modify the storyline of a virtual world based on real-world "local elements" tied to a player's geographic location. The system detects a player's location, retrieves relevant local information (such as weather or news), and then uses a "local element script" to alter gameplay for that player and others. While this IPR directly challenges the validity of the patent, the technology it describes is central to ImagineAR's augmented reality platform, which facilitates the creation of immersive digital experiences.

The procedural posture of this case is an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), with the case number IPR2025-01275. The PTAB is an administrative body that offers a quicker and generally less expensive alternative to district court litigation for challenging patent validity, primarily based on prior art consisting of patents or printed publications. Importantly, the status of this particular IPR is "Not Instituted," meaning the PTAB reviewed Unified Patents' petition but declined to initiate a full review of the patent's validity on the merits. It is noted that while the case metadata specifies Unified Patents as the petitioner, publicly available information for IPR2025-01275 identifies Niantic, Inc. as the petitioner. Per the operating rules, this summary prioritizes the provided metadata of "Unified Patents" as the petitioner.

This case is notable due to the involvement of Unified Patents, an organization known for its aggressive strategy in challenging patents often asserted by NPEs. The PTAB's decision to not institute the IPR is significant because it indicates that ImagineAR Inc.'s patent survived this challenge at the pre-institution stage, allowing the patent to retain its presumptive validity against the arguments raised by the petitioner. This outcome is particularly relevant in the current landscape, where PTAB institution rates against NPEs have seen declines in recent quarters.

The case Unified Patents v. ImagineAR Inc., IPR2025-01275, concerning US patent 11484797, did not proceed to institution at the Patent Trial and Appeal Board (PTAB). While the case metadata provided lists Unified Patents as the petitioner, research indicates that Niantic, Inc. was the petitioner in IPR2025-01275 against ImagineAR, Inc. as the patent owner. This IPR was part of a series of challenges by Niantic against ImagineAR's patents.

The primary legal developments relate to a parallel district court litigation involving the same parties and patents, which significantly influenced the PTAB's decision not to institute the IPR.

Key Legal Developments and Outcome:

• Initial Pleadings & Parallel District Court Litigation (2024-11-13): ImagineAR, Inc. and Imagine AR, Inc. (collectively, IAR) filed a patent infringement lawsuit against Niantic, Inc. in the U.S. District Court for the District of Delaware, Case No. 1:24-cv-01252-JDW. This litigation asserted infringement of multiple patents, including U.S. Patent No. 11,484,797, by Niantic's video games such as Pokémon GO and Harry Potter: Wizards Unite.
• Filing of IPR Petition (2025-07-14): Niantic, Inc. filed an Inter Partes Review (IPR) petition, IPR2025-01275, with the Patent Trial and Appeal Board, challenging claims 1-28 of U.S. Patent No. 11,484,797. The petition primarily argued that claims 1-21, 24, 26, and 27 were obvious over the Kolo prior art, and claims 22-23, 25, and 28 were obvious over Kolo in view of Zyda.
• Discovery Milestones (Parallel Litigation - August 2025): In the parallel district court litigation, ImagineAR served its Infringement Contentions on August 1, 2025, comprising over 650 pages. Niantic, in turn, served its Invalidity Contentions on August 28, 2025, which included 48 invalidity charts related to the patents at issue, including the '797 patent. Niantic also produced over 25,000 pages of documents.
• Pre-trial Motion Outcome (Parallel Litigation - 2025-09-08): The U.S. District Court for the District of Delaware granted Niantic's motion to dismiss, finding claims of U.S. Patent No. 11,484,797 (among other ImagineAR patents) to be directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. The court determined that the asserted claims, which concerned tailoring game content based on a player's geographic location, used functional, results-oriented language and failed to describe how the claimed functions could be achieved.
• Further Pre-trial Motion Outcome (Parallel Litigation - 2026-04-07): For a second time, the District Court for the District of Delaware granted Niantic's motion for judgment on the pleadings, again ruling that the claims of U.S. Patent No. 11,484,797, along with other related patents, were invalid under 35 U.S.C. § 101 because they were abstract and non-inventive.
• IPR Outcome - Not Instituted: The PTAB ultimately declined to institute IPR2025-01275. While the specific institution decision document for this IPR was not found, the "Not Instituted" status, coupled with the District Court's rulings of patent ineligibility for the same patent in parallel litigation, strongly suggests that the PTAB exercised its discretion not to proceed with the IPR. Patent owners frequently argue for discretionary denial in IPRs when there is a co-pending district court case that is further along or has reached a substantive decision.

Inapplicability to IPR Proceedings: It is important to note that many of the requested categories (e.g., answer, counterclaims, Markman outcomes, strategic discovery milestones beyond initial contentions, trial events, verdict, post-trial motions like JMOL or new trial, settlement/dismissal/judgment in the context of infringement) are typical of district court patent infringement litigation and are generally not applicable to Inter Partes Review proceedings at the PTAB. IPRs are administrative proceedings focused solely on the patentability of claims based on prior art patents or printed publications.

Unified Patents, the petitioner in IPR2025-01275, primarily relies on its in-house legal team for challenging patents. Unified Patents is a membership organization that actively files IPRs and other post-grant proceedings to deter unsubstantiated patent assertions and improve patent quality. They employ a team of experienced patent attorneys who manage these proceedings internally.

While specific counsel for IPR2025-01275 are not explicitly detailed in publicly available search results for Unified Patents v. ImagineAR Inc., general information about Unified Patents' legal team and practices indicates the following:

Counsel for Unified Patents (Plaintiff/Petitioner):

Unified Patents employs several Senior Patent Counsel and other legal professionals who are responsible for drafting, filing, and litigating patent office proceedings, including IPRs. Based on their publicly listed team and typical IPR practice, individuals who frequently act as in-house counsel for Unified Patents in their IPR challenges include:

• Jonathan Stroud: COO & Chief IP Counsel. Mr. Stroud is a prominent figure at Unified Patents and is involved in their overall IP strategy and post-grant challenges.
• Roshan Mansinghani: Head of Operations, Legal Head - NPE. Mr. Mansinghani is noted for representing Unified Patents in reexamination proceedings.
• Alyssa Holtslander: Trademark Managing Counsel. Ms. Holtslander has also represented Unified Patents in reexamination proceedings.
• Jessica L.A. Marks: SEP & Foreign Managing Counsel, Senior Patent Counsel. Ms. Marks has been a speaker for Unified Patents on IPR-related topics.
• Jenn Bisk: Senior Patent Counsel.
• Kyla Butler: Senior Patent Counsel.
• Kelly Hughes: Senior Patent Counsel.
• Patrick King: Senior Patent Counsel.
• T.J. Murphy: Senior Patent Counsel.
• Vinu Raj: Senior Patent Counsel.
• Jordan Rossen: Senior Patent Counsel. Mr. Rossen has presented on interactions between the PTAB and district courts.
• David Seastrunk: Senior Patent Counsel.
• Andrea Shoffstall: Senior Patent Counsel.
• Michelle Aspen: Senior Patent Counsel.

Unified Patents states that it works independently of its members and is not a law firm that creates attorney-client relationships with its members. Their in-house team handles the majority of their administrative patent review activities.

Note on potential discrepancy:
It is important to reiterate that while the authoritative case metadata states Unified Patents as the petitioner for IPR2025-01275, publicly available information for this specific IPR often lists Niantic Inc. as the petitioner challenging U.S. Patent No. 11,484,797, with an institution decision to deny on January 8, 2026. In the Niantic Inc. v. ImagineAR Inc. IPRs (e.g., IPR2025-01273, IPR2025-01275), Jessica Kaiser et al. are listed as Petitioner Counsel for Niantic. However, adhering to the provided authoritative metadata for this specific request, the focus remains on Unified Patents' counsel.

ImagineAR Inc., the patent owner in IPR2025-01275, has retained legal counsel from Greenberg Traurig, LLP, and it appears attorneys from that firm are representing them in patent-related matters. ImagineAR announced in September 2024 that it had retained Greenberg Traurig, LLP, to serve as its legal counsel for its patent portfolio, including enforcement and protection of its proprietary AR technologies.

While the specific counsel for IPR2025-01275 with Unified Patents as the petitioner are not explicitly detailed in all public records, information regarding related IPRs and parallel district court litigation involving ImagineAR Inc. and its '797 patent provides insight into their legal representation.

Based on available information, the following counsel are involved in representing ImagineAR Inc. in patent litigation, including IPRs related to U.S. Patent 11,484,797:

• Renee Mosley Delcollo

  • Role: Attorney
  • Firm: Greenberg Traurig, P.A. (office location not specified, but involved in Delaware District Court case)
  • Note: Represented ImagineAR, Inc. in the parallel district court litigation, ImagineAR, Inc. v. Niantic, Inc., No. 1:24-cv-01252-JDW (D. Del.), which involved U.S. Patent 11,484,797.

• Erik M. Bokar

  • Role: Back-Up Counsel (designated to represent Patent Owner ImagineAR, Inc.)
  • Firm: Not explicitly stated for IPRs, but licensed in Illinois and Florida.
  • Note: Designated as "Back-Up Counsel" for ImagineAR, Inc. in IPR proceedings (including IPR2025-01275, though the declaration is from a Niantic-initiated IPR) and is counsel of record in the parallel district court litigation, ImagineAR, Inc. v. Niantic, Inc., No. 1:24-cv-01252-JDW (D. Del.), demonstrating familiarity with the patents at issue.

• James J. Lukas, Jr. (and others, collectively referred to as "Lukas, James et al.")

  • Role: Respondent Counsel
  • Firm: Not explicitly stated in all IPR listings.
  • Note: Identified as "Respondent Counsel" for ImagineAR, Inc. in several IPRs, including IPR2025-01273 and IPR2025-01275, which challenged patents including U.S. Patent 11,484,797.

ImagineAR's CEO, Alen Paul Silverrstieen, also submitted a declaration in support of the Patent Owner's Discretionary Denial Brief in related IPR proceedings, indicating his active involvement from an in-house perspective. ImagineAR has consistently emphasized the importance of its patent portfolio and its strategy to enforce and protect its intellectual property.