Challenges for Extended Reality (XR) Companies in Patent Prosecution and Litigation

The Backstory

Extended Reality (XR) technologies, an umbrella term that includes and unites Augmented Reality (AR), Virtual Reality (VR) and Mixed Reality (MR) technologies, is purported as the future of mobile computing ^[1]. From Head-Mounted Displays, which provide a user with the sense of being in a virtual space, to Haptic Controllers that allow a user to touch and grasp virtual objects, XR is poised to revolutionize user experience in entertainment, automobile, retail, marketing, healthcare and real estate. Hence, it is not surprising that several organizations within these industries are turning to Intellectual Property, particularly patents, to protect their XR innovations. This is evident in a report by IPlytics showing that the number of XR patent applications filed globally has more than doubled in the last four years. Yet, XR companies seeking patent protection for their innovations are saddled with unique challenges. In this article, we highlight some of these challenges from patent prosecution and litigation standpoints and offer some insights on how to navigate them.

Patent Prosecution

According to IPlytics, the top three XR patent owners in the world are LG Group, Sony Corporation, and Qualcomm Incorporated. The scope of patent protection sought varies from software algorithms, which simulate the real world, to displays that enhance real-world experiences. It is worth noting that most countries operate on a first-to-file patent system. What this means is that if two inventors are independently working on the same invention, it is the inventor who files their application in the patent office first who is entitled to the patent. To this end, XR companies seeking patent protection for their innovation must do so promptly, even so, companies must be careful not to compromise on the quality of their patent applications for the sake of expediency. Companies that compromise on the quality of their patent application in a bid to win the race to the patent office run the risk of obtaining patents that offer less and/or are subject to validity challenges.

Another potential pitfall for XR companies is how to ensure that their patent claims adequately cover their innovations. Patent claims define the boundaries of patent protection. Despite XR technology bridging the gap between virtual and physical reality, patent claims to physical embodiments are unlikely to extend coverage to their virtual counterpart. As an example, the Rubik’s cube is a 3-D combination puzzle held together by internal springs, however, a virtual Rubik’s cube does not require internal springs to function. In this manner, a patent claim for the Rubik’s cube that includes the internal springs as a limitation, may not cover the virtual Rubik’s cube. Similarly, unlike the physical world that is subject to physical laws, such as gravity, the virtual world is not. For example, a claim to an apparatus in the physical world that recites “a first element falls under gravity into a second element” may not cover a counterpart apparatus that exists in the virtual world – since the virtual world is not subject to the law of gravity. In essence, claims that recite a physical law may unnecessarily limit the scope of the invention. Accordingly, XR companies should ensure that their patent claims cover the invention in both physical and virtual environments.

Patent Litigation

Because of the relatively young age of XR technology, there is little to no jurisprudence to rely on in determining how the Courts might construe patent claims. Furthermore, because the patent laws in each jurisdiction are different, it automatically follows that cases will be litigated differently. Consequently, XR patent owners should proactively develop a patent litigation strategy, especially considering that it may be challenging to assert claims to a virtual environment.

The Takeaway

As the XR industry continues to develop, companies seeking patent protection for their XR innovation must be aware of the potential pitfalls around patent prosecution and litigation. In particular, to gain a competitive edge over their competition, companies should enlist patent agents/attorneys that are versed in the intricacies of XR technology. Furthermore, XR companies and their representatives should exercise caution when drafting claims that define embodiments in the virtual world, in particular, where recited limitations are structural. Lastly, XR companies and their representatives should proactively consider how best to utilize existing provisions of the patent laws to their advantage.

[1] https://www.qualcomm.com/invention/extended-reality