Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 1 of 9 PageID #: 906
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Case No. 17-cv-386-VAC-CJB
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`TECHNO VIEW IP, INC.,
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`OCULUS VR, LLC, and
`FACEBOOK, INC.,
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`Plaintiff,
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`v.
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`Defendants.
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`PLAINTIFF TECHNO VIEW IP INC.’S OBJECTIONS TO THE
`AUGUST 30, 2018 REPORT AND RECOMMENDATION
`CONSTRUING DISPUTED CLAIM TERMS
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`
`O’KELLY ERNST & JOYCE, LLC
`Sean T. O’Kelly (No. 4349)
`901 N. Market Street, Suite 1000
`Wilmington, DE 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
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`
`Attorneys for Plaintiff Techno View IP, Inc.
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`Dated: September 13, 2018
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 2 of 9 PageID #: 907
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`TABLE OF AUTHORITIES
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`CASES
`3M Innovative Properties Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2004) .................................................................................................. 4
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .................................................................................................. 4
`
`Comcast Cable Communications, LLC v. Sprint Communications Co.,
`38 F. Supp. 3d 589 (E.D. Pa. 2014) ............................................................................................ 5
`
`Epistar Corp. v. Int’l Trade Comm’n,
`566 F.3d 1321 (Fed. Cir. 2009) .................................................................................................. 5
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379, 1381 (Fed. Cir. 2008) ........................................................................................ 4
`
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) .................................................................................................. 1
`
`Intellectual Ventures I LLC v. T-Mobile USA, Inc.,
`No. 2017-2434, slip op. (Fed. Cir. Sept. 4, 2018) ....................................................................... 5
`
`Lexington Luminance LLC v. Amazon.com, Inc.,
`No. 12-CV-12216-DJC, 2016 WL 1337254 (D. Mass. Apr. 4, 2016) ....................................... 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................................................. 3
`
`SciMed Life Systems, Inc., v. Advanced Cardiovascular Systems, Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) .................................................................................................. 6
`
`SCVNGR, Inc. v. DailyGobble, Inc.,
`CASE NO. 6:15-CV-493-JRG-KNM, 2017 WL 4270200 (E.D. Tex. Sept. 26, 2017) ............. 2
`
`Thorner v. Sony Computer Entm't Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .................................................................................................. 4
`
`Wi-Lan, Inc v. Apple, Inc.,
`811 F.3d 455 (Fed. Cir. 2016) .................................................................................................... 2
`
`RULES
`D. Del. LR 72.1 ............................................................................................................................... 1
`
`Fed. R. Civ. P. 72 ............................................................................................................................ 1
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`ii
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 3 of 9 PageID #: 908
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`Pursuant to Fed. R. Civ. P. 72(b)(2) and (b)(3) and D. Del. LR 72.1(a)(3) and (b),
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`plaintiff Techno View IP, Inc. (“TVIP”) respectfully objects to Magistrate Judge Burke’s August
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`30, 2018 Report and Recommendation (D.I. 76)1 construing several disputed claim terms (Terms
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`5-6) of TVIP’s U.S. Patent Nos. 7,666,096 (the “‘096 patent”) and 8,206,218 (the “‘218
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`patent”).2
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`Term: "storing a[n] [videogame] image in[to] the [left/first] [back]buffer; determining
`[if/when] the [videogame] image is [in] a two-dimensional [format/image] or a three-
`dimensional [format/image]" (Claims 1, 8, and 16 of the ‘096 patent)
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`TVIP objects to the ruling of the Report and Recommendation that Term 1 (“storing …;
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`determining …”) should be construed as requiring that the storing step occur prior to the
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`determining step. See D.I. 77 at 2-5.
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`The Report and Recommendation relies on a flawed antecedent basis argument.
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`Antecedent basis is a judicially created requirement that stems from Section 112(b) of the Patent
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`Statute, which mandates that claims, “particularly point [] out and distinctly claim [] the subject
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`matter which the inventor or a joint inventor regards as the invention.” This is referred to as
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`definiteness—a claim is indefinite when it contains words or phrases whose meaning is unclear.
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`See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014). Thus, the requirement is that each
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`claim element must have an antecedent basis. To satisfy this requirement, an indefinite article
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`(e.g., “a” or “an”) must be used before a noun or noun phrase the first time that noun or noun
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`phrase is introduced. When that noun is used subsequently throughout the claim, it must then be
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`preceded by a definite article (e.g., “the” or “said”). This relates to definiteness, not claim
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`construction and order of steps.
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`1 Unless otherwise noted, the docket entries referred to in these objections are those in Case No.:
`17-cv-386-VAC-CJB
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` Pursuant to D. Del. LR 72.1(b), TVIP’s objections should be reviewed by the Court de novo.
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 4 of 9 PageID #: 909
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`The Report cites to two cases: Wi-Lan, Inc v. Apple, Inc., 811 F.3d 455 (Fed. Cir. 2016)
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`and SCVNGR, Inc. v. DailyGobble, Inc., CASE NO. 6:15-CV-493-JRG-KNM, 2017 WL
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`4270200 (E.D. Tex. Sept. 26, 2017), neither of which stands for the proposition that the use of
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`indefinite and definite articles are determinative of the order in which steps must be performed.
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`The Report and Recommendation first cites to Wi-Lan, quoting "Subsequent use of the definite
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`articles ‘the’ or ‘said’ in a claim refers back to the same term recited earlier in the claim." D.I.
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`76 at 4. This simply describes part of the requirements for definiteness. The Report and
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`Recommendation then cites to a portion of SCVNGR that states, “Step (b) recites ‘transmitting ...
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`the code’ generated in step (a), so step (a) must be performed before step (b)." D.I. 76 at 4-5.
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`The Court in SCVNGR did not find the steps needed to be performed in the claimed order based
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`on an antecedent basis analysis. Rather, the antecedent basis requirement was only used to show
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`that the code transmitted in step (b) was the same code generated in step (a). The Court in
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`SCVNGR relied on simple logic to find that a code must be generated before it can be
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`transmitted, and therefore step (a) must occur before step (b).
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`Here, much like in SCVNGR, the antecedent basis requirement clearly shows that the
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`image referred to in the storing step is the same as the image referred to in the determining step.
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`However, there is no logical reason why the determining step cannot occur prior to the storing
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`step, nor is there a grammatical reason (such as displaying the stored image, which
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`grammatically requires an image to be stored first) for restricting the order of storing and
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`determining. For example, the patent describes an example of the determining step as simply
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`checking a flag. See ‘096 patent, col. 11:12-13 (“VERIFIES IF IT IS [3D] BY CHECKING
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`THE FLAG”). There is no logical or technical reason why the verifying of a programming flag
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`cannot happen before or after a left eye image is placed in a buffer.
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 5 of 9 PageID #: 910
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`The Report and Recommendation then appears to conclude that, because logic and
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`grammar can be used to describe why the other steps mentioned in the claim are required to be in
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`their claimed order, then the only two steps actually in question must therefore also occur in the
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`claimed order. However, even assuming, arguendo, that the other steps must be performed in
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`their claimed order, the logic or grammar that applies to other steps does not apply here. It is
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`clear, logically and grammatically, that the step of “displaying the image stored in the left
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`backbuffer …” must occur after the image is actually stored in the left backbuffer. Similarly, the
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`step “simultaneously displaying the images stored in the left and right backbuffers …” must
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`occur after the images are actually stored in the left and right backbuffers. But no such logical or
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`grammatical argument can be made for the “storing” and “determining” steps to be carried out in
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`one particular order.
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`Accordingly, TVIP proposes that the Court adopt TVIP’s construction of the term
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`"storing a[n] [videogame] image in[to] the [left/first] [back]buffer; determining [if/when] the
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`[videogame] image is [in] a two-dimensional [format/image] or a three-dimensional
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`[format/image]" such that the storing step and the determining step may be performed in any
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`order.
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`Term: “videogame” (Claims 1, 5, 8, 12, and 16 of the ‘096 patent; claims 1, 2, 7, and 8 of
`the '218 patent)3
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`The words of a claim are generally given their ordinary and customary meaning as
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`understood by a person of ordinary skill in the art when read in the context of the specification
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`and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
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`banc). There are only two exceptions to this general rule: 1) when a patentee sets out a definition
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`3 The term "videogame" generally appears in the patent claims as part of a phrase, e.g.,
`"videogame system," (see, e.g., '096 patent, col. 13:39), but also as a standalone term (i.e., "the
`videogame"). (id., col. 14:3).
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 6 of 9 PageID #: 911
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`and acts as his own lexicographer; or 2) when the patentee disavows the full scope of a claim
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`term either in the specification or during prosecution. See Thorner v. Sony Computer Entm't Am.
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`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
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`To act as its own lexicographer, a Patent Owner must “clearly set forth a definition of the
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`disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick
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`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). A Patent Owner must do more than “simply
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`disclose a single embodiment or use a word in the same manner in all embodiments, the patentee
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`must ‘clearly express an intent’ to redefine the term.” Thorner, 669 F.3d at 1365 (quoting
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`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008)). For
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`example, in 3M v. Avery, the Federal Circuit held that the patentee acted as its own lexicographer
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`when the specification stated:“ ‘Multiple embossed [pattern]’ means two or more embossing
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`patterns are superimposed on the web to create a complex pattern of differing depths of
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`embossing” as opposed to the ordinary meaning, which would have required sequentially
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`embossed patterns. 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365,
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`1369, 1371-72 (Fed. Cir. 2004).
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`Here, the inventor did not “clearly express an intent” to redefine the term “videogame.”
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`The Court’s recommended construction of this term is a melding together of two independent
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`and generalized descriptions of what “[a]ny videogame is” (‘096 Patent, col. 3:53) and what
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`“[v]ideogames are (‘096 Patent, col. 5:64).” Moreover, the inventor did not “clearly set forth”
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`the definition the Report and Recommendation provides for this term, namely “A software
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`program written in some computer language with its objective to simulate a nonexistent world
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`and take a player or user into this world, which has a process which starts by providing a
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`plurality of independently related logical states which include a set of programming options,
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 7 of 9 PageID #: 912
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`where each programming option corresponds to different image characteristics." D.I. 76 at 8.
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`Instead the Report and Recommendation incorporated Defendants’ construction, which only
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`discloses how a videogame functions, or may function, but does not change the plain and
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`ordinary meaning of the term “videogame.”
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`Similarly, disavowal is an “exacting” standard under which it must be established that the
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`patentee “demonstrate[d] an intent to deviate from the ordinary and accustomed meaning of a
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`claim term” through “expressions of manifest exclusion or restriction, representing a clear
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`disavowal of claim scope.” Intellectual Ventures I LLC v. T-Mobile USA, Inc., No. 2017-2434,
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`slip op. at 10 (Fed. Cir. Sept. 4, 2018) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d
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`1321, 1334 (Fed. Cir. 2009)). In Intellectual Ventures, the Court found that there was no “intent
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`to deviate from” the full scope of the claims when the applicant noted during prosecution that,
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`e.g., “As will be apparent to those skilled in the art, ‘application aware’ refers to the resource
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`allocator’s knowledge of information from the Application layer seven (7) of the [OSI] model of
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`network architectures.” Intellectual Ventures, No. 2017-2434, slip op. at 10-12. Here, there is
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`nothing in either the specification or the prosecution history that describes any intent to deviate
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`from the full scope of the plain and ordinary meaning of “videogame,” and thus, there was no
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`disavowal.
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`Moreover, for the purposes of construing the commonly understood term “videogame” in
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`view of the claims in which they appear, the level of granularity the construction now includes in
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`the Report and Recommendation is unduly burdensome in its complexity and would, therefore,
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`be needlessly confusing to a jury. See Lexington Luminance LLC v. Amazon.com, Inc., No. 12-
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`CV-12216-DJC, 2016 WL 1337254, at *12 (D. Mass. Apr. 4, 2016) (adopting plaintiff’s
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`construction because defendants’ proposed construction “includes a series of details . . . that are
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 8 of 9 PageID #: 913
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`likely to needlessly confuse the jury”); Comcast Cable Communications, LLC v. Sprint
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`Communications Co., 38 F. Supp. 3d 589, 621 (E.D. Pa. 2014) (rejecting defendant’s proposed
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`construction because “it includes detail that will needlessly confuse the jury without
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`meaningfully impacting the questions of infringement and invalidity.”) Here, the Court
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`recommends construction of the term “videogame” to include the unwieldy phrase, “providing a
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`plurality of independently related logical states which include a set of programming options,
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`where each programming option corresponds to different image characteristics." The jury will
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`therefore be asked to both understand and determine the meaning of what is meant by the
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`undefined phrases “independently related logical states” and “set of programming options”, and
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`also what is meant by such “options” having to “correspond to different image characteristics.”
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`The Court’s suggested construction would serve to confuse the jury as a result of its unnecessary
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`complexity. This construction furthermore risks reading new, and therefore improper, limitations
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`from the specification into the claims. See SciMed Life Systems, Inc., v. Advanced
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`Cardiovascular Systems, Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001).
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`Accordingly, TVIP proposes that the Court adopt TVIP’s construction of the term
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`“videogame” to mean “a software program written in some computer language, with its objective
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`to simulate a non-existent world and take a player or user into this world,” which is also the plain
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`and ordinary meaning of the term both currently and to one skilled in the art at the time of the
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`invention. In the alternative, TVIP proposes a common dictionary definition of “videogame”,
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`such as “an electronic game in which players control images on a video screen” (see
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`https://www.merriam-webster.com/dictionary/video%20game).
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`Case 1:17-cv-00386-CFC-CJB Document 81 Filed 09/13/18 Page 9 of 9 PageID #: 914
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`Dated: September 13, 2018
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`O’KELLY ERNST & JOYCE LLC
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`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly (No. 4349)
`901 N. Market Street, Suite 1000
`Wilmington, DE 19801
`(302) 778-4000
`(302) 295-2873 (facsimile)
`sokelly@oelegal.com
`
`
`Attorneys for Plaintiff
`TECHNO VIEW IP, INC.
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