IP Law Daily, PATENT—Fed. Cir.: Nintendo’s infringement of 3D imaging patent remanded for review under correct claim construction, (Dec 8, 2014)

By Cheryl Beise, J.D.

Because the federal district court in New York City incorrectly construed a claim term in a 3D imaging patent asserted by Tomita Technologies USA, LLC, and Tomita Technologies International, Inc. (“Tomita”), against Nintendo Co., Ltd., and Nintendo of America, Inc. (“Nintendo”), the U.S. Court of Appeals for the Federal Circuit vacated the judgment and remanded the case for reconsideration of the jury’s infringement verdict in light of the proper construction (Tomita Technologies USA, LLC v. Nintendo Co., Ltd., December 8, 2014, Prost, S.).

Tomita owns U.S. Patent No. 7,417,664 (’664 patent), entitled “Stereoscopic image picking up and display system based upon optical axes cross-point information.” The invention improves the 3D effect (or stereoscopic feelings) of stereoscopic images by changing the stereoscopic degree according to the size of a display screen and different stereoscopic image pick-up conditions.

Tomita accused Nintendo’s 3DS gaming system, along with its camera application and augmented reality game card application, of infringing claim 1 of the ’664 patent. The 3DS has a 3D-capable top display, 3D-capable outer cameras and a “3D Depth Slider” to adjust the depth of 3D images.

On March 13, 2013, the jury found that Nintendo infringed claim1 of the ’664 patent and awarded damages to Tomita. The jury further found that claim 1 was not invalid. Nintendo’s subsequent motion for judgment as a matter of law or a new trial was denied by the district court. Nintendo appealed.

The Federal Circuit upheld the district court’s denial of Nintendo’s JMOL as to its infringement of the “cross-point measuring means” claim element and insofar as it challenged the validity of claim 1. The court also affirmed the district court’s denial of Nintendo’s motion for a new trial based on jury instructions relating to “cross-point,” “cross-point information,” and “cross-point measuring means.” However, because the district court erred in construing the “offset presetting means” claim element, the appeals court vacated the judgment and remanded the case for further proceedings to determine whether the accused instrumentalities infringed the ’664 patent under the correct claim construction.

Claim construction. Reviewing the district court’s claim construction de novo, the Federal Circuit determined that the district court correctly construed the “cross-point measuring means” claim element, but erred in construing the “offset presetting means” claim element.

The ’664 patent describes adjusting the relative timing between the left-eye and right-eye video images “to provide optimal stereoscopic feeling.” The patent describes initially recording the “cross-point information” at the same time the cameras capture the stereoscopic images. An “offset presetting means” uses “cross-point information” and conditions relating to the playback to provide viewers with the appropriate stereoscopic feelings. The cross-point is where the optical axes of the two stereoscopic cameras intersect.

“Offset presetting means.” The district court construed the terms “offset presetting means” and “cross-point measuring means” as means-plus-function elements and adopted Tomita’s proposed construction. The district court construed the function of “offset presetting means” as “offsetting and displaying said different video images based upon said video image information, said cross-point information and information on the size of the image which is displayed by said stereoscopic video image display device.”

The Federal Circuit determined that the district erred in adopting Tomita’s proposed corresponding structure for “offset presetting means” as recited in claim1. The specification and the figures do not sufficiently disclose different embodiments of the same structure, as Tomita contended. Further, the lack of structure for “offset presetting means” in Figures 2, 7, 8 and their descriptions was not cured by the Tomita expert’s conclusory statements to the contrary. “[E]expert testimony cannot gloss over the total absence of structure in the cited portion of the specification,” the court said.

Because there was only a single embodiment of the “offset presetting means,” the Federal Circuit reversed the district court’s adoption of Tomita’s proposed corresponding structure for “offset presetting means.” On remand, the district court was directed to reevaluate Nintendo’s motion for JMOL of non-infringement using the proper corresponding structure, defined as: “timing control unit 32, signal switch 40, switch control unit 41, and synthesis frame memory 50 described in Figure 3 and column 9 line 44 to column 10 line 29 and equivalents thereof.”

“Cross-point measuring means.” Nintendo argued that the 3DS did not satisfy the function of the “cross-point measuring means claim element because camera bodies arranged in parallel have parallel optical axes that can never intersect to have a “cross-point.” However, the premise of this assertion was disproved by Tomita’s submission of a 1993 technical paper showing that cameras arranged in parallel can have intersecting optical axes under particular optical configurations, the court noted. Tomita contended that, while the cameras of the 3DS are disposed in parallel, they have intersecting optical axes.

The court also rejected Nintendo’s assertion that the 3DS did not satisfy the “cross-point measuring means” because the 3DS used a technique that purportedly was outside district court’s claim construction. However, the jury’s finding that the 3DS satisfied the “cross-point measuring means” was supported by substantial evidence, according to the court.

Invalidity. The court noted that Nintendo’s invalidity contentions were the reverse of its non-infringement theory based on “cross-point measuring means,” namely that the cameras of the 3DS had parallel optical axes that could never intersect to have a “cross-point.” Nintendo, however, failed to show that the jury’s infringement verdict necessarily rested on the incorrect assumption that claim 1 encompassed cameras with parallel optical axes, rather than intersecting optical axes. Accordingly, the district court did not err in denying Nintendo’s JMOL motion with respect to invalidity.

New trial. Nintendo’s motion for a new trial was based on jury instructions relating to “cross-point,” “cross-point information,” and “cross-point measuring means.” Nintendo argued that a new trial was warranted because the district court’s improper jury instruction allowed Tomita to prove infringement that departed from the district court’s claim construction of “cross-point measuring means.” The Federal Circuit disagreed. First, the district court did not err in instructing the jury. Second, Tomita did not depart from the district court’s claim construction of “cross-point measuring means.”

Nintendo also argued that the district court declined to construe “cross-point,” allowing Tomita to confuse the jury by conflating the claim terms “cross-point” and “cross-point information” with “offset.” Again, the court disagreed, finding that Tomita’s discussions of “cross-point” did not differ with how the term was used in the ’664 patent.

The case is No. 2014-1244.

Attorneys: Kenneth L. Stein (Stroock & Stroock & Lavan LLP) for Tomita Technologies USA, LLC, and Tomita Technologies International, Inc. Steven S. Rosenthal (Kaye Scholer LLP) for Nintendo Co., Ltd., and Nintendo of America, Inc.

Companies: Tomita Technologies USA, LLC; Tomita Technologies International, Inc.; Nintendo Co., Ltd.; Nintendo of America, Inc.

Cases: Patent FedCir