Case 1:17-cv-00386-CFC-CJB Document 87 Filed 11/01/18 Page 1 of 3 PageID #: 953
`
`Sean T. O’Kelly, Esquire
`sokelly@oelegal.com
`Direct (302) 778-4001
`
`
`November 1, 2018
`
`
`
`VIA E-FILING
`
`
`
`The Honorable Christopher J. Burke
`United States District Court
` For the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`
`Re: Techno View IP, Inc. v. Oculus VR, LLC et al.,
`C.A. No. 17-386 (CFC)(CJB)
`
`
`
`Dear Judge Burke:
`
`We write on behalf of Plaintiff in response to the Court’s order in its October 18, 2018
`Report and Recommendation for further letter briefing on the “with a processor” claim terms.
`(D.I. 85 at 20). As the Court recognized when it ordered this briefing, the issue is not whether 35
`U.S.C. § 112 ¶ 6, can apply to any method claim limitation, but whether the Defendant has
`overcome the presumption that § 112 ¶ 6 does not apply to the specific “with a processor” claim
`steps. Here, Defendant has failed to overcome the presumption for the following reasons.
`
`With respect to a method claim, Defendants continue to misunderstand the correct
`application of “step-plus” function versus “means-plus” function limitations. Defendants have,
`moreover, chosen to disregard the Court’s order to further brief the Court on the application of
`“step-plus” review under § 112 ¶ 6. As expressly held by the Federal Circuit, “‘structure’ and
`‘material’ are associated with means-plus function claim elements while ‘acts’ is associated with
`step-plus function claim elements.” Seal-Flex, Inc. v. Athletic Track & Court Const., 172 F.3d
`836, 848 (Fed. Cir. 1999). The method claim in the instant case nowhere recites “means for”
`language. Thus, the Court in its October 18, 2018 Report and Recommendations has recited the
`correct standard for the method claims of the instant case when stating that “means-plus function
`limitations are found in apparatus claims, whereas step-plus function limitations are found in
`method claims.” Dkt. 85, p. 13; Dynamic Digital Depth Research PTY LTD v. LG Elecs., Inc.,
`No. CV 15-5578-GW(EX), 2016 WL 7444569, at *11 (C.D. Cal. Nov. 7, 2016).
`
`The Court has further correctly described the approach for determining when the “step-
`plus” function portion of § 112 ¶ 6 applies to method claims. Specifically, the correct approach
`for determining when § 112 ¶ 6 applies to method claims is to look at the plain language of the
`claim. For example, “[i]f (as here) the claim does not recite ‘steps for,’ the defendant must make
`a showing that the limitation contains nothing that can be construed as an act in order for Section
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`Case 1:17-cv-00386-CFC-CJB Document 87 Filed 11/01/18 Page 2 of 3 PageID #: 954
`
`The Honorable Christopher J. Burke
`November 1, 2018
`Page 2 of 3
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`112, paragraph 6 to be implicated.” Dkt. 85, p. 18 (quoting Masco Corp. v. United States, 303 F
`.3d 1316, 1327 (Fed. Cir. 2002)). Said differently, if a claim element recites both a step for
`performing a particular function and an act in support of the function, § 112 ¶ 6 will not apply to
`that claim element.
`
`There is no question that the “with a processor” claims do not include “steps for”
`language, which would provide a presumption of § 112 ¶ 6 applicability. The “with a processor”
`claims do, however, recite a function and an act that shows how the function is being
`accomplished. For example, the “with a processor claim” recites the following function:
`“calculating … second position coordinates of a second eye view of the object in three
`dimension space.” Further, the claim recites the following act, which is how the function is
`accomplished: “using the calculated first position coordinates of the first eye view.” Thus, the
`“with a processor” claim cannot be interpreted as a “step-plus” function claim reviewable under
`the § 112 ¶ 6 standard.
`
`Rather than utilize the correct approach when deciding whether to review a method claim
`under § 112 ¶ 6. Defendants ask the Court to ignore Federal Circuit precedent and apply the
`same analysis to both means- and step-plus-function claims. Defendants argue that the Court
`should follow this approach because the method claim recites the term “processor,” and the
`recited “processor” is a physical component. Accordingly, Defendants contend the “with a
`processor” method claim is not a step, and step-plus-function analysis should not apply to that
`claim element. Dkt. 86, p. 2. We disagree. The claim term to be construed is not simply the
`word “processor.” Rather, the claim terms to be construed are “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.” That is, the claim terms in question are
`method claims that, in context, involve far more words than simply “processor.” Further, as
`noted in Zeroclick, “[i]n determining whether this presumption has been rebutted, the challenger
`must establish by a preponderance of the evidence that the claims are to be governed by § 112, ¶
`6.” Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018) (citing Advanced Ground
`Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016)). However, Defendant’s
`letter brief (Dkt. 86) fails to provide any intrinsic or extrinsic evidence in support of their
`position, and thus the presumption cannot be overcome.
`
`At various points in their argument, Defendants refer to cases involving method claims
`where § 112 ¶ 6 has been applied. Dkt. 86, pp. 2-3. The cases cited by Defendants, however,
`relate to claims which differ than the claims in the present case. For example, in the J & M case
`cited by Defendants, the issue involved infringement under the doctrine of equivalents rather
`than claim construction. Further, the Federal Circuit stated, in part, that “[t]he district court
`construed this limitation to be a means-plus-function limitation under 35 U.S.C. ¶ 6 and neither
`party has challenged this determination on appeal. We need not consider, under our de novo
`review, whether this construction is correct ….” J & M Corp. v. Harley-Davidson, Inc., 269
`F.3d 1360, 1367, n.3 (Fed. Cir. 2001) (emphasis added). As such, because the Federal Circuit
`expressly indicated that it would not consider whether the construction in J & M is correct, this
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`Case 1:17-cv-00386-CFC-CJB Document 87 Filed 11/01/18 Page 3 of 3 PageID #: 955
`
`The Honorable Christopher J. Burke
`November 1, 2018
`Page 3 of 3
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`case cannot be used to support Defendants’ position. Similarly, neither party in Network
`Appliance even raised the issue of whether step-plus-function language should apply, and none
`of the California district court’s opinion is directly on point. See Network Appliance Inc. v. Sun
`Microsystems Inc., No. C-07-06053 EDL, 2008 WL 4193049, at *17 (N.D. Cal. Sept. 10, 2008).
`
`Further, every case referred to by Defendants included claim language involving method
`claims describing functions without acts. For example, in On Demand Mach. Corp. v. Ingram
`Indus., Inc., 442 F.3d 1331 (Fed. Cir. 2006), the claim limitation at issue was “providing means
`for a customer to visually review said sales information.” Id. at 1341. The court in On Demand
`did not explicitly describe why § 112 applied. However, this limitation clearly describes a
`function without an act, and thus § 112 should apply using the approach correctly identified by
`the Court. As provided above, the “with a processor” claim of the instant case recites both a
`function and the act describing how the function is accomplished. Thus, for this additional
`reason the cases cited by Defendants are inapplicable to the Court’s § 112 ¶ 6 rationale.
`
`Finally, Defendants mischaracterize Epcon Gas and its impact on governing law
`regarding step-plus-function claims. Defendants state that, “[a]s such, the assertion in Epcon
`Gas that Section 112(6) is implicated for a method claim ‘only when steps plus function without
`acts are present,’ does nothing more than articulate when a step-plus-function analysis may be
`appropriate.” Dkt. 86, p. 2 (quoting Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d
`1022, 1028 (Fed. Cir. 2002)). However, this statement by the Court in Epcon Gas is more than
`just guidelines for what step-plus-function analyses might possibly be appropriate. Instead, it is
`a restatement of the specific technique that must be used to determine when limitations in
`method claims will fall under § 112. While Defendants are correct that Williamson did cite to
`Masco Corp. v. United States, 303 F.3d 1316 (Fed. Cir. 2002), the Court disapproved only of
`extending Masco's holding to means-plus-function terms and expressly overruled the
`requirement of Flo Healthcare Sols., LLC v. Kappos, 697 F.3d 1367, 1374 (Fed.Cir.2012) of “a
`showing that the limitation essentially is devoid of anything that can be construed as structure.”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Nothing in Williamson
`suggests that Masco is no longer the governing law for identifying step-plus-function terms.
`Instead, the Williamson Court merely recognized the different standard applicable to step-plus-
`function terms and commented only that Masco involved “the unusual circumstances in which §
`112, para. 6 relates to the functional language of a method claim.” Id. Thus, Masco is still
`governing law for identifying step-plus-function terms.
`
`In conclusion, Plaintiff respectfully submits that the claimed limitations of the “with a
`processor” claims do not invoke § 112 ¶ 6. This conclusion is consistent with Federal Circuit
`precedent and district court decisions. Accordingly, Plaintiff respectfully requests that the Court
`adopt its position that these terms be construed as not being subject to § 112 ¶ 6.
`
`
`
`Respectfully,
`
`/s/ Sean O’Kelly
`
`Sean O’Kelly
`
`