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Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware

On April 24, 2016, District Judge Jed S. Rakoff (S.D.N.Y.) ruled that defendants Nintendo Co., Ltd. and Nintendo of America, Inc.'s (collectively, “Nintendo”)’s 3DS pocket gaming console does not infringe Tomita Technologies USA, LLC (“Tomita”)’s U.S. Patent No. 7,417,664 (“the ’664 patent”) either literally or under the doctrine of equivalents. Previously, following a jury trial in which Tomita prevailed on infringement and validity of the ’664 patent, the Federal Circuit reversed the Court’s construction of the “offset preset means” limitation and announced its own. On remand, the Court held a bench trial to determine infringement under the Federal Circuit’s construction, and issued this opinion.

The Court explained that 3D images are an illusion, and that “while a good magician never reveals her tricks, the Court must explain this one in detail.” 3D images are actually two-dimensional images that create a perception of depth in viewer’s mind by delivering two slightly different images to a viewer’s left and right eyes. One common way to deliver a separate image to each eye is to overlap left-eye and right-eye images by shifting one or both images along their common horizontal axis, creating an “offset.” Offsetting the images by just the right amount creates optimal stereoscopic imagery.

The “offset present means” recited in the claims is a means-plus-function element under 35 U.S.C. 112(f). The Court explained that literal infringement of a means-plus-function claim requires that the relevant structure perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.  The issue before the Court was whether Tomita had shown structural equivalence.

The Court applied the “function-way-result” test for determining equivalence, and concluded that Tomita failed to carry its burden. With respect to the way prong, whereas the structure disclosed in the patent is hardware to horizontally offset only a right-eye image, the 3DS employs matrix transformations in software to adjust both left- and right-eye images. This “substantial” difference, the Court found, allows the 3DS to operate more flexibly and to simultaneously accomplish multiple adjustments—for instance, vertical and horizontal translations. With respect to the result prong, the Court found that the result of the structure in the patent—pixel data stored in frame memory—is substantially different from the result of the structure in the 3DS—an image displayed on an LCD screen.

Case: Tomita Techs. USA, LLC v. Nintendo Co. Ltd., No. 11-cv-4256(JSR), 2016 U.S. Dist. LEXIS 54570, 2016 BL 130042 (S.D.N.Y. Apr. 24, 2016). The patent-in-suit is U.S. Patent No. 7,417,664.