Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 1 of 21 PageID #: 929
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
`
`TECHNO VIEW IP, INC.,.
`
`Civil Action No. 17-386-CFC-CJB
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`)
`)
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`)
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`F ACEBOOK TECHNOLOGIES, LLC and )
`F ACEBOOK, INC.,
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`)
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`Plaintiff,
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`V.
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`Defendants.
`
`REPORT AND RECOMMENDATION
`
`In this action filed by Plaintiff Techno View IP, Inc. ("Plaintiff') against Facebook
`
`Technologies, LLC and Facebook, Inc. (collectively, "Defendants"), Plaintiff alleges
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`infringement of United States Patent Nos. 7,666,096 (the "'096 patent") and 8,206,218 (the "'218
`
`patent"). Presently before the Court is the matter of claim construction. The Court recommends
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`that the District Court adopt the constructions as set forth below.
`
`I.
`
`BACKGROUND AND STANDARD OF REVIEW
`
`The Court hereby incorporates by reference the summary of the factual and procedural
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`background of this matter set out in its August 15, 2018 Report and Recommendation ("August
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`15 R&R"). (D.I. 74 at 1-3) It additionally incorporates by reference the legal principles
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`regarding claim construction set out in the August 15 R&R. (Id. at 3-5)
`
`II.
`
`DISCUSSION
`
`The parties had disputes regarding eight terms or sets of terms (hereafter, "terms"). The
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`August 15 R&R addressed the first four terms. On August 30, 2018, the Court issued a Report
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`and Recommendation that addressed terms five and six. (D.I. 76) The final two terms are
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`addressed herein.
`
`I
`I
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`.
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 2 of 21 PageID #: 930
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`A.
`
`The various "coordinates" terms
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`Claims 1, 4, 5, 8, 12 and 16 of the '096 patent and claims 1, 3, 4, 5, 7, 9, 10, 13 and 14 of
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`the '218 patent contain various "coordinates" terms-specifically, "spatial coordinates," "spatial
`
`coordinates (x,y,x)," "position coordinates" and "coordinates of [a/the] ... view position."1
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`Claims 7 and 9 of the '218 patent are exemplary with respect to usage of these terms, reproduced
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`below:
`
`7. A method in a video game system for displaying three(cid:173)
`dimensional images, comprising the computer implemented steps
`of:
`providing first and second buffers;
`calculating first position coordinates of a first eye view;
`storing a first eye view image captured virtually from the
`calculated first position of the first eye view of a virtual object in
`the videogame into the first buffer;
`calculating, with a processor of the video game system,
`second spatial coordinates of a second eye view of the virtual
`object in the videogame in three dimensional space by coordinate
`transformation equations using the calculated first position
`coordinates of the first eye view and the position of the virtual
`object in the videogame;
`determining a second eye view image of the virtual object based on
`the calculated second spatial coordinates;
`storing the second eye view image in the second buffer; and
`outputting the first eye view image from the first buffer and the
`second eye view image from the second buffer to a display to
`provide a three dimensional perspective of the virtual object from
`the videogame system to a user.
`
`('218 patent, col. 14:18-38 (emphasis added))
`
`9. The method according to claim 7, wherein calculating the
`second spatial coordinates comprises calculating the x and z
`coordinates only so that there is no deviation in the height of the
`second eye view of the virtual object with respect to the first eye
`view of the virtual object.
`
`There are no coordinates terms found in the actual text of claims 8, 12 and 16 of
`the '096 patent, but both parties assert that the coordinates terms relate to those claims too. (D.I.
`52 at ii; D.I. 53 at 11)
`
`2
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 3 of 21 PageID #: 931
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`(Id., col. 14:43-47 (emphasis added))
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`According to Defendants, in each of the claims at issue, the various coordinates terms are
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`referring to the coordinates of the second camera. (D.I. 73 (hereinafter, "Tr.") at 109) With
`
`respect to the '096 patent, that seems correct, as all of the claims at issue do appear focused on
`
`calculating the coordinates of a second camera view position (sometimes by calculating some
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`other set of coordinates), as set out below:
`
`Claim 1: ''wherein when the image is in a three-dimensional
`format, calculating the coordinates of a second view position of the
`image[,]" ('096 patent, col. 13:47-49);
`
`Claim 4: "wherein calculating the coordinates of the second view
`position comprises calculating the coordinates of a right eye
`camera view position[,]" (id., col. 13:63-65);
`
`Claim 5: "wherein calculating the coordinates of the second view
`position comprises obtaining spatial coordinates (x,y,z) by
`coordinate transformation[,]" (id., cols. 13 :66-14:2);
`
`Claim 8: "calculating a second camera position view image from
`the videogame system[,]" (id., col. 14:26-27);
`
`Claim 12: "wherein calculating a second camera position view
`image comprises determining a first virtual camera position ... [,]"
`(id., col. 14:44-45);
`
`Claim 16: "calculating a second camera position view image from
`the videogame system[,]" (id., col. 16:3-4).
`
`Defendants' assertion appears mostly true for the claims at issue in the '218 patent as well,
`
`although some claims also include reference to calculating first position coordinates of a first eye
`
`view, and claim 13 is directed to "getting coordinates of a new perspective" of the virtual object.2
`
`The pertinent portions of these claims from the '218 patent are set out below:
`
`2
`That said, claim 13 depends from claim 7, and thus one following the method of
`claim 13 would still be calculating first position coordinates of a first eye view and second
`3
`
`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 4 of 21 PageID #: 932
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`Claim 1: "calculating first position coordinates of a first eye view .
`. . calculating, with a processor of the video game system, second
`position coordinates of a second eye view of the object in three
`dimensional space using the calculated first position coordinates of
`the first eye view[,]" ('218 patent, col. 13 :48-55);
`
`Claim 3: "wherein calculating the second position coordinates
`comprises calculating the x and z coordinates of the second eye
`view[,]" (id., col. 14:1-3);
`
`Claim 4: "wherein calculating the second position coordinates of
`the second view image comprises calculating the coordinates of a
`right eye camera view position[,]" (id, col. 14:6-9);
`
`Claim 5: "wherein calculating the second position coordinates of
`the second eye view comprises obtaining spatial coordinates by
`coordinate transformation equations given the location of a first
`virtual camera corresponding to the first eye view[,]" (id., col.
`14:10-14);
`
`Claim 7: "calculating first position coordinates of a first eye view .
`. . calculating, with a processor of the video game system, second
`spatial coordinates of a second eye view ... [,]" (id., col. 14:22-
`27);
`
`Claim 9: "wherein calculating the second spatial coordinates
`comprises calculating the x and z coordinates ... [,]" (id., col.
`14:43-45);
`
`Claim 10: "wherein calculating the second spatial coordinates of
`the second view image of the virtual object comprises calculating
`the spatial coordinates of a right eye camera view position[,]" (id.,
`col. 14:48-51);
`
`Claim 13: "[t]he method according to claim 7, further comprising .
`. . getting coordinates of a new perspective of the virtual object ..
`. [,]" (id., col. 14:63-64);
`
`Claim 14: "wherein the calculation of the second spatial
`coordinates of the second eye view comprises placing the second
`eye view at a virtual position that is 6.5 to 7.0 cm apart from the
`
`spatial coordinates of a second eye view of the virtual object. ('218 patent, col. 14:21, 27-28, 59,
`63-64)
`
`4
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 5 of 21 PageID #: 933
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`calculated portion coordinates of the first eye view[,]" (id., cols.
`14:66-15:3).
`.
`
`The Court now turns to the parties' current competing proposed constructions for the
`
`various "coordinates" terms. They are as follows:
`
`Term
`
`Plaintiff's Construction
`
`Defendants' Construction
`
`coordinates terms
`
`the set(s) of values calculated
`for each claimed coordinate
`type ("spatial," "position,"
`''view ·position," etc.)
`
`the point(s) in space
`calculated for each claimed
`coordinate type ("spatial,"
`"position," "view position,"
`etc.)
`
`(June 18 e-mail) The parties' dispute with respect to the "coordinates" terms boils down to
`
`whether each claimed coordinate type refers to set(s) of values, or to point(s) in space. (See Tr.
`
`at 108-09)
`
`Defendants take the latter view. And while their original proposed construction reflected
`
`that the coordinate terms should be construed to mean "[p Joints in space that are located by their
`
`positions in relation to intersecting x, y, and z axes"-in other words, limiting the term to
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`coordinates in a Cartesian coordinate system that take the form of (x, y) for two dimensions and
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`(x, y, z) for 3 dimensions, (D.I. 53 at 11-12 (emphasis added))-their revised proposed
`
`construction is "not specifically tied to [CJ artesian coordinates[,]" (Tr. at 11 0; see also id. at
`
`109).3
`
`3
`Defendants explained the reason why they altered their proposed construction.
`They noted that Plaintiffs originally proposed construction for the coordinates terms was
`"[c]oordinates are the set of values in an (x, y, z) coordinate system." (D.I. 52 at 10-11; see also
`D.I. 53 at 12 (Defendants stating in their opening brief that as for the term "coordinates" itself,
`"the parties do not appear to have any material dispute. The term refers to Cartesian coordinates
`.... ")) But then, after seeing that Plaintiff thereafter seemed to have second thoughts about
`proffering a construction that included "strict[]" reference to "cartesian coordinates[,]"
`Defendants simply left out "XYZ from [their own prior] proposal for a broader definition of
`points in space[.]" (Tr. at 109-10) Defendants suggest this new compromise should be
`5
`
`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 6 of 21 PageID #: 934
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`Plaintiff, for its part, asserts that the various coordinates terms represent a series of
`
`values, and not necessarily only just points in space. (D.I. 52 at 10-11; Tr. at 106) Plaintiffs
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`problem with limiting the construction to just points in space flows from its assertion that the
`
`claims rely on the coordinates terms "to describe much more than a singular point in space, but a
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`set of values ... that may include ... linear and rotational components as well." (Tr. at 104)
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`The decision here was difficult, as the material relating to the "coordinates" terms is
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`complex and the parties' arguments were not always easy to understand. In the Court's view,
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`however, Defendants' position seems the better one. It so concludes for a few reasons.
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`First, Defendants convincingly pointed out that every example disclosed in the
`
`specification regarding how the claimed "coordinates" are obtained make reference to the use of
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`"XYZ-type or coordinates"-i.e., "points in space." (Tr. at 109; see also id. at 114; D.I. 57 at 9-
`
`10 & n.5 (Defendants contending that "the multitude of examples of coordinates set forth in the
`
`specification are provided in Cartesian (x, y, z) format")) For example, the Abstracts of the
`
`patents explain that "[t]he [claimed 3D videogame] system allows handling the information of
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`data associated to the xyz coordinates of the object's image in real-time[.]" ('096 patent at
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`Abstract; '218 patent at Abstract; see also, e.g., '096 patent, FIG. 8; cols. 4:6-7; 4:40; 12: 17-18;
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`12:49, 12:54-56; 12:57-59; 12:63-64; 13:16, 13:18-19)
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`Second, even though the coordinates terms use "slightly different terminology[,]" they do
`
`all seem to be referring to the same thing-a set of points within a coordinate system. (D.I. 53
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`embraced by both sides, and they argue that Plaintiffs current proposal ("set(s) of values") is
`ambiguous and unhelpful. (Id. at 109 (Defendants' counsel asserting of Plaintiffs construction:
`"We don't actually know what that means."))
`
`6
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 7 of 21 PageID #: 935
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`at 12-13; see also D.l. 57 at 10; Tr. at 108) And as Defendants noted, there are circumstances
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`where a patentee can use differently-worded terms interchangeably. In Edwards Lifesciences
`
`LLC v. Cook Inc., 582 F.3d 1322 (Fed. Cir. 2009), for example, the Federal Circuit concluded
`
`that the district court correctly construed the terms "graft," "graft structure," "bifurcated base
`
`structure," and "bifurcated base graft structure" to have the same meaning, where they were
`
`"used interchangeably in the specification and the claims[.]" Edwards Lifesciences, 582 F.3d at
`
`1328. By way of example, here Defendants point to claim 7 of the '218 patent (where the
`
`method for displaying three-dimensional images utilizes a computer to calculate the "first
`
`position coordinates of a first eye view" and "second spatial coordinates of a second eye view")
`
`as an instance where slightly different terms seem to be used to refer to the same thing. ('218
`
`patent, col. 14:18-38 (emphasis added) (cited in D.l. 53 at 12)) As Defendants asserted during
`
`oral argument, "[i]t' s like a big circle. They are all used to comprise the other thing, so they all
`
`seem to be used interchangeably." (Tr. at 113-14)
`
`Third, the Court did not find Plaintiffs arguments to the contrary to be persuasive. The
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`Court takes up those ~guments in detail below.
`
`One of Plaintiffs arguments was that the following portion of the specification supports
`
`its construction, in that it shows how the intrinsic record calls out coordinate information that
`
`may not be encompassed by a point in space, (D.I. 59 at 18):
`
`The angle between the axis and the vector joining the primary
`camera with the objective is created.
`The quadrant to which it belongs for the application of special
`considerations in the angle's calculation is classified by an inverse
`tangent function.
`New coordinates are obtained, rotating the whole coordinate
`system from its axis in the same angle between the axis and the
`vector, a new coordinate system is obtained in which the object is
`
`7
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 8 of 21 PageID #: 936
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`placed on the 'z' axis and the primary camera will remain at the
`origin of the new coordinate system.
`
`('096 patent, col. 13:1-10 (emphasis added by Plaintiff)) According to Plaintiff, Defendants'
`
`proposed construction, in limiting the coordinates to being points in space, fails to supply "any
`
`angular or directional information" needed to identify the location of the object as well as the
`
`object's directional orientation. (D.I. 59 at 17-18) However, after re-reading this paragraph
`
`repeatedly, it just is not clear to the Court that the paragraph's use of the term "coordinate" or
`
`"coordinates" is necessarily meant to evoke the idea that those terms should include a reference
`
`to angular or directional information. And Plaintiff did not sufficiently explain to the Court why
`
`this was so. Moreover, immediately after the passage above, the specification continues:
`
`The coordinates of the secondary camera are obtained by placing it
`in the human eyes' average distance position[.]
`These coordinates ·are rotated in the same initial angle[.]
`The "x" and "z" offsets are added, which were originally
`subtracted to take the primary camera to the origin[.]
`Finally, these two new Xs y Zs coordinates are assigned to the
`secondary camera and the yp coordinate is maintained, which
`determines the height for the same value of a final coordinates
`point (Xs, Yp, Zs) to be assigned to the secondary camera.
`
`('096 patent, col. 13:11-20 (emphasis added)) This paragraph much more clearly does seem to
`
`associate the term "coordinates" with a point in space on the x, y, z axis. Thus, with the former
`
`paragraph not moving the ball much at all as to this issue, and the latter paragraph supporting
`
`Defendants' position, in the end, this portion of the specification was not helpful to Plaintiff.
`
`Another of Plaintiffs arguments was that the specification referenced certain "'vectorial
`
`coordinates"' which may be used as the "'coordinates of [a/the] ... view position."' (D.I. 52 at
`
`13) Following the printing of code labeled "[m]odifications to xyz camera vector," the
`
`specification explains that:
`
`8
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 9 of 21 PageID #: 937
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`Thus, a pair of buffers corresponding to the left eye and right eye
`are created, which, when evaluated in the game loop get the
`vectorial coordinates corresponding to the visualization of the
`right camera and the left camera ( complement calculated with the
`SETXYZTDV function) by means of the usual coordinate
`transform equations.
`
`('096 patent, col. 11 :22-42 (emphasis added)) Plaintiff then argues that such vectorial
`
`coordinates are expressed "in one way as [ a particular formula that must be distinguished from]
`
`the Cartesian coordinates (x, y, z)." (D.I. 52 at 13) However, in support of this assertion (i.e.,
`
`that vectorial coordinates are not associated with points in space), Plaintiff cites only to Figure 3
`
`of the '218 patent; Figure 3, in tum, shows three examples ofx, y, z coordinates (and does not
`
`reference the particular equation cited by Plaintiff). (Id.; '218 patent, FIG. 3; D.I. 57 at 9 & n.4)
`
`Thus, this line of argument was not helpful for Plaintiff either.
`
`Another of Plaintiffs arguments was that "spatial coordinates" utilize 3D characteristics
`
`that may include rotational components, and that may be computed from '"coordinate
`
`transformation equations' with angular components." (Plaintiffs Markman Presentation, Slide
`
`53) Plaintiff cites in support to a portion of the specification explaining that "[a]n additional 3D
`
`modeling and animation characteristic is added to the previous programs by means of the
`
`coordinate transformation equations, namely:
`
`x=x' cos <I> -y' sin <I>
`
`y=x' sin <I>+ y' cos <I>[.]"
`
`('096 patent, col. 12:29-34) As an initial matter, it is not clear to the Court how the cited portion
`
`of the patent supports Plaintiffs position (i.e., that spatial coordinates may include rotational
`
`components), and Plaintiff did not cite to any supporting materials that would help make this
`
`clear. Furthermore, as Defendants' counsel pointed out, the specification seems to go on to
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`9
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 10 of 21 PageID #: 938
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`explain that these coordinate transformation equations are used to determine an XYZ coordinate.
`
`(Tr. at 110-11) That is, after providing the equations, the patentee explains that the exact
`
`position is calculated for a second camera directly linked to the first camera, and that
`
`subsequently two simultaneous images are obtained from different perspectives which simulates
`
`a person's stereoscopic visual perspective. ('096 patent, col. 12:35-40) The coordinate
`
`transformation equations are used to reposition the first camera, second camera and object in the
`
`proper positions. (Id, col. 12:35-47) The specification explains that seven parameters need to
`
`be known (xyz coordinates of the first camera, the equivalent distance to the average separation
`
`of the eyes, and the three coordinates of the object's position when observed by the cameras) and
`
`"[t]he output parameters will be coordinates of the secondary camera observing the same
`
`object[], i.e., (Xs, Ys, Zs)," obtained following several steps set out in the patent. (Id, col. 12:47-
`
`56; see also id, col. 13:16-20)4
`
`For these reasons, the Court recommends that the various coordinates terms be construed
`
`to mean "the point(s) in space calculated for each claimed coordinate type ('spatial,' 'position,'
`
`'view position,' etc.)."
`
`B.
`
`"calculating, with a processor of the videogame system, second position
`coordinates of a second eye view of the object in three dimensional space
`using the calculated first position coordinates of the first eye view" and
`"calculating, with a processor of the videogame system, second spatial
`coordinates of a second eye view of the virtual object in the videogame in
`three dimensional space by coordinate transformation equations using the
`calculated first position coordinates of the first eye view and the position of
`the virtual object in the videogame"
`
`4
`All this said, and though the Court's construction of these coordinates terms will
`be that they all refer to "point(s) in space," even Defendants' counsel noted the parties have not
`"fully briefed positions on the purported differences between these different" coordinates terms.
`(Tr. at 113) The Court leaves open the possibility that further clarifying constructions of some or
`all of the coordinates terms would be needed in the future.
`10
`
`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 11 of 21 PageID #: 939
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`These terms ( the "with a processor" terms) are found in claims 1 and 7 of the '218 patent.
`
`Claim 7 is reproduced above, and claim 1 is reproduced below:
`
`1. A method in a videogame system for displaying three(cid:173)
`dimensional images, comprising the computer implemented steps
`of:
`providing left and right backbuffers;
`calculating first position coordinates of a first eye view;
`storing a first eye view image captured virtually from the
`calculated first position coordinates of the first eye view of an
`object in the videogame into the left backbuffer;
`calculating, with a processor of the video game system, second
`position coordinates of a second eye view of the object in three
`dimensional space using the calculated first position coordinates
`of the first eye view;
`determining a second eye view image of the object captured
`virtually from the calculated second position coordinates of the
`second eye view;
`storing the second eye view image in the right backbuffer; and
`displaying the first eye view image and the second eye view image
`to the user to provide a three dimensional perspective of the object
`from the videogame system to a user.
`
`('218 patent, col. 13:44-64 (emphasis added)) The parties' disputes regarding these terms
`
`include: (1) whether the terms are means-plus-function limitations under 35 U.S.C. § 112, 'if 6
`
`("Section 112, paragraph 6"); and (2) if they are, the appropriate construction for these terms.
`
`(D.I. 52 at 18-20; D.I. 53 at 15; D.I. 57 at 12) The parties' current competing proposed
`
`constructions for the "with a processor" terms are set out in the chart below:
`
`Term
`
`Plaintiff's Construction
`
`Defendants' Construction
`
`"calculating, with a processor The claim limitations do not
`of the video game system,
`recite a "means plus
`second position coordinates
`function" claim limitation.
`of a second .eye view of the
`object in three dimensional
`space using the calculated
`first position coordinates of
`the first eye view" ( claim 1)
`
`If the Court finds that a
`"means" limitation is
`invoked, Plaintiff proposes
`the following constructions:
`Claim 1 - Structure
`
`The claim limitations are
`subject to means plus
`function under applicable
`law.
`
`Structure: processor
`employing the algorithm
`'SETXYZTDV())' as
`
`11
`
`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 12 of 21 PageID #: 940
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`disclosed in columns 12:17-
`13:25.
`
`Function (claim 1):
`calculating second position
`coordinates of a second eye
`view of the object in three
`dimensional space using the
`calculated first position
`coordinates of the first eye
`view
`
`Function (claim 7):
`calculating second spatial
`coordinates of a second eye
`view of the virtual object in
`the videogame in three
`dimensional space by
`coordinate transformation
`equations using the calculated
`first position coordinates of
`the first eye view and the
`position of the virtual object
`in the videogame
`
`"calculating, with a processor A videogame system for
`of the video game system,
`displaying three-dimensional
`second spatial coordinates of
`images, with a processor of
`a second eye view of the
`the videogame system that is
`virtual object in the
`capable of calculating
`videogame in three
`coordinate equations at least
`dimensional space by
`by means of the usual
`coordinate transformation
`coordinate transform
`equations using the calculated equations. (See '218 patent,
`first position coordinates of
`claim 1, col. 13:44-55; see
`the first eye view and the
`also col. 11:46-47)
`position of the virtual object
`in the video game" ( claim 7)
`
`Claim 1 - Function
`Using a videogame system
`processor to calculate second
`position coordinates of a
`second eye view of an object
`in three-dimensional space
`using the calculated first
`position coordinates of the
`first eye view of the object in
`three-dimensional space.
`
`Claim 7 - Structure
`A videogame system for
`displaying three-dimensional
`images, with a processor of
`the videogame system that is
`capable of calculating
`coordinate equations at least
`by means of the usual
`coordinate transform
`equations. (See '218 patent,
`claim 7, col. 14:18-31; see
`also col. 11 :46-47)
`
`Claim 7 - Function
`Using a videogame system
`processor to calculate second
`spatial coordinates of a
`second eye view of a virtual
`object in the videogame in
`three-dimensional space by
`coordinate transformation
`equations using the calculated
`
`12
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`

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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 13 of 21 PageID #: 941
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`first position coordinates of
`the first eye view and the
`position of the virtual object
`in the videogame
`
`(D.I. 52 at 17-18; D.I. 53 at 15; D.I. 59 at 20)
`
`Claims 1 and 7 are both method claims. Section 112, paragraph 6 provided as follows:
`
`An element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the
`recital of structure, material, or acts in support thereof, and such
`claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents
`thereof.
`
`35 U.S.C. § 112, ~ 6 (emphasis added). The Federal Circuit has found that this provision should
`
`be interpreted such that the word "step" applies forprocess claims and that the term "acts" refers
`
`to the implementation of the steps; the word "means," on the other hand, refers to apparatus
`
`claims that are implemented by structures or materials. 0.1 Corp. v. Tekmar Co., 115 F.3d
`
`1576, 1582-83 (Fed. Cir. 1997). In other words, "means-plus-function limitations are found in
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`apparatus claims, whereas step-plus-function limitations are found in method claims." Dynamic
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`Dig. Depth Research Pty. Ltd. v. LG Elecs., Inc., Case No. CV 15-5578-GW(Ex), 2016 WL
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`7444569, at *11 (C.D. Cal. Nov. 7, 2016); see also Free Stream Media Corp. v. Alphonso Inc.,
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`Case No. 2:15-CV-1725-RWS, 2017 WL 1165578, at *31 (E.D. Tex. Mar. 29, 2017) ("Claim 14
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`is a method claim, which requires step-plus-function analysis.").
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`On the current record, the Court is not in a position to resolve the parties' disputes with
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`respect to this term. The Court's difficulty in deciding the parties' dispute is that Defendants
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`argued that this term should be construed as a means-plus-function limitation with a
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`corresponding structure set out in the specification-despite the fact that the term is included in
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`method claims. Accordingly, it appears that the similar-and-yet-different step-plus-function
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`13
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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 14 of 21 PageID #: 942
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`analysis should be employed. As the Court will explain below, the step-plus-function analysis is
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`complex, and as a result, the Court would benefit from further guidance from the parties on the
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`issue in order to sufficiently resolve the dispute.
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`The Court will first set out what it believes to be the state of the law regarding step-plus(cid:173)
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`function analysis. Then it will set out a process for obtaining additional argument from the
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`parties.
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`1.
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`Section 112, Paragraph 6's Application to Method Claims
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`For method claims, section 112, paragraph 6 is implicated only when a claim element in a
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`method claim recites a step for performing a specified function without the recital of acts in
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`support of the function. 0.1 Corp., 115 F.3d at 1583; Epcon Gas Sys., Inc. v. Bauer
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`Compressors, Inc., 279 F.3d 1022, 1028 (Fed. Cir. 2002). The Federal Circuit has explained that
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`the term "steps" refers to the generic description of the elements of a process, whereas the
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`"function" of a method claim element corresponds to "what that element ultimately accomplishes
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`in relationship to what the other elements of the claim and the claim as a whole accomplish."
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`Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836, 849 (Fed. Cir. 1999) (Rader, J.,
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`concurring) (emphasis in original); 0.1 Corp., 115 F.3d at 1583. "Acts," on the other hand,
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`correspond to how the function is accomplished (i.e., to the implementation of the steps of the
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`process). 0.1 Corp., 115 F.3d at 1583. 5 If Section 112, paragraph 6 is implicated, the limitation
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`5
`In the context of the step-plus-function analysis, accused infringers have at times
`argued that a particular limitation lacks sufficient detail to serve as an act that would take the
`claim out of Section 112, paragraph 6 territory. In response, courts have explained that there is:
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`[A] subtle but critical difference between how a function is
`accomplished and how an act accomplishes a function. The former
`is an identify-the-act question, appropriate for deciding if [ section
`112, paragraph 6] applies in the first instance. The latter is an
`14
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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 15 of 21 PageID #: 943
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`must be construed "to cover the corresponding ... acts described in the specification." 3 5 ·
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`U.S.C. § 112, ,r 6; Agere Sys. Inc. v. Atmel Corp., No. CIV.A 02-864, 2003 WL 21652264, at
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`*22 (E.D. Pa. May 27, 2003).
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`How does one determine whether Section 112, paragraph 6 is implicated? As an initial
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`matter, merely claiming a step by itself, or a series of steps-without recital of a function-does
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`not implicate Section 112, paragraph 6. 0.1 Corp., 115 F.3d at 1583; Cardiac Pacemakers, Inc.
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`v. St. Jude Med, Inc., 381 F.3d 1371, 1382 (Fed. Cir. 2004) (A method claim "necessarily
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`recite[ s] the steps of the method."); Masco Corp. v. United States, 303 F .3d 1316, 1327 (Fed.
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`Cir. 2002) ("Method claims are commonly drafted, as in this case, by reciting the phrase 'steps
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`· of followed by a list of actions comprising the method claimed."). As the Federal Circuit has
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`explained: "[i]f we were to construe every process claim containing steps described by an 'ing'
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`verb, such as passing, heating, reacting, transferring, etc. into a step-plus-function limitation, we
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`would be limiting process claims in a manner never intended by Congress." 0.1 Corp., 115 F.3d
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`at 1583.6 If, however, a claim element recites a step that is individually associated with a
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`analyze-the-act question, appropriate for determining if a claim
`element is valid under the enablement, written description, and
`definiteness inquiries under [section 112, paragraphs 1 and 2].
`Identifying an act to see if [Section 112, paragraph 6] applies (step(cid:173)
`plus-function identification) is an inherently less searching inquiry
`'i:han analyzing the same act under [the statutes relevant to
`enablement, written description and definiteness inquiries].
`
`Neurografix v. Regents of Univ. of Cal., No. 2:1 l-cv-07591-MRP-RZ, 2012 WL 8281409, at *6
`(C.D. Cal. June 13, 2012) (internal quotation marks omitted); Word to Info Inc. v. Facebook Inc.,
`Case No. 15-cv-03485-WHO, 2016 WL 3690577, at *26 (N.D. Cal. July 12, 2012).
`
`6
`An example of merely claiming a step alone came in EBS Dealing Resources, Inc.
`v. Intercontinental Exchange, Inc., 379 F. Supp. 2d 521 (S.D.N.Y. 2005). There, the Court
`concluded that the disputed limitations of the method claim at issue ("automatically
`administering credit on a unilateral basis" and "automatically deriving a respective dealable price
`15
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`Case 1:17-cv-00386-CFC-CJB Document 85 Filed 10/18/18 Page 16 of 21 PageID #: 944
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`specified function, Section 112, paragraph 6 will be implicated, if that element does not also
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`recite the act necessary to perform the step and achieve the function. Epc