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ImagineAR, Inc., v. Niantic, Inc., 2026 WL 936029 (D. Del. Apr. 7, 2026)
Brushing aside a § 101 rejection overcome during the prosecution of U.S. Patent No. 10,946,284 (“the ’284 Patent”), District Judge Wolson granted Niantic’s motion for judgment on the pleadings finding the ’284 Patent invalid for claiming patent-ineligible subject matter. The Court found the ’284 patent covering location-based gaming techniques at play in popular mobile games such as Pokémon Go was directed to an abstract idea and lacked an inventive concept that was sufficiently more than the abstract idea.
ImagineAR’s patents cover systems and methods directed toward the interplay between geographical spacing within a virtual environment and the real world based on location sensor data. In plain terms, these patents cover systems that let games use real-world locations to shape the virtual experience. ImagineAR accused Niantic of infringing its virtual location-based patents in its games including Pokémon Go, Pikmin Bloom, Peridot, Skatrix, Monster Hunter Now, and Harry Potter: Wizards Unite.
35 U.S.C. § 101 permits patents on a “new and useful process, machine, manufacture, or composition of matter,” but courts have long since excluded laws of nature, natural phenomena, and abstract ideas from that list. The seminal cases of Alice Corp. v. CLS Bank (“Alice”) and Mayo Collaborative v. Prometheus (“Mayo”) established a two-step test for patent subject matter eligibility, asking (1) whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea or law of nature, and (2), if the invention is directed to a patent-ineligible concept,1 whether the claims possess an inventive concept that creates something significantly more than the ineligible concept itself.
Step One of the Alice/Mayo test posed little issue for the Court, which found the claims to be nothing more than “tailoring content based on a player’s location,” a concept the Court noted as repeatedly found to be abstract by the Federal Circuit. Worse yet, Judge Wolson explained that even if ImagineAR had done a better job identifying the problem to be solved it would have still fallen short of Alice/Mayo’s Step One. For Step Two, the Court also found no inventive concept, describing the claims as using conventional components (location sensors, databases, and computers generally) to perform routine steps.
ImagineAR pushed back, arguing inter alia that this patent had already overcome a §101 rejection during prosecution. Judge Wolson did not care. The Court explained “a patent examiner’s consideration of Section 101 issues does not in any way shield the patent’s claims from Article III review for patent eligibility.”Practice Tip: For accused infringers, § 101 remains a powerful early-stage defense, even when the examiner previously considered eligibility during prosecution. For patent drafters, prosecution history is not a safe harbor; claims should articulate a specific technical problem and concrete technical solution (not merely result-oriented automation) to withstand later Alice/Mayo challenges
Footnote
1. This is unclear to me. If the claim is directed to patent-ineligible subject matter, why would you go to another step? I’ve revised—please make sure this is accurate.
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