Case 1:17-cv-00386-VAC-CJB Document 74 Filed 08/15/18 Page 1 of 20 PageID #: 861
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`TECHNO VIEW IP, INC.,
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`Plaintiff,
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`V.
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`OCULUS VR, LLC and
`F ACEBOOK, INC.,
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`Defendants.
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`Civil Action No. 17-386-VAC-CJB
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`REPORT AND RECOMMENDATION
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`In this action filed by Plaintiff Techno View IP, Inc. ("Techno View" or "Plaintiff')
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`against Oculus VR, LLC ("Oculus") and Facebook, Inc. ("Facebook" and collectively with
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`Oculus, "Defendants"), Plaintiff alleges infringement of United States Patent Nos. 7,666,096 (the
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`'"096 patent") and 8,206,218 (the '"218 patent" and collectively with the '096 patent, "the
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`asserted patents"). Presently before the Court is the matter of claim construction. The Court
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`recommends that the District Court adopt the constructions as set forth below.
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`I.
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`BACKGROUND
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`A.
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`The Parties
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`Plaintiff is a California corporation, and the exclusive licensee of the asserted patents.
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`(D.I. 8 at ,r,r 1-2) Defendant Oculus is a Delaware limited liability company with its principal
`place of business in Menlo Park, California. (Id. at ,r,r 3, 6; D.I.12 at ,r,r 3, 6) Defendant
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`Facebook is a Delaware corporation with its principal place of business in Menlo Park,
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`California. (D.I. 8 at ,r,r 8, 1 O; D.I. 12 at ,r,r 8, 10)
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`Defendants are in the business of making, using, and selling the Oculus Rift product.
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`(D .I. 8 at ,r 3 O; D .I. 17 at 1) In this action, Plaintiff alleges that Defendants directly and
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`indirectly infringe the asserted patents by the manufacture, use, sale, and offers to sell of
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`products, including their Oculus Rift product. (D.I. 8)
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`B.
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`The Asserted Patents
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`The '096 patent is entitled "Method for Generating the Left and Right Perspectives in a
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`3D Videogame[,]" and was issued on February 23, 2010. (D.I. 8, ex. A (hereinafter, the "'096
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`patent")) The '218 patent is entitled "3D Videogame System" and was issued on June 26, 2012.
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`(Id., ex. B (hereinafter, the '"218 patent")) The '218 patent is a continuation of the '096 patent,
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`and the patents therefore share a specification. (See '218 patent; D.I. 53 at 1) Both patents claim
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`priority to application No. PCT/MX03/00112, filed on December 19, 2003. ('096 patent; '218
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`patent; D.I. 56, Slide 1)
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`The patents relate to "the display of three-dimensional [hereinafter, '3D'] television
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`images, more specifically to a hardware and software design for viewing [] 3D[] images, easy to
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`be integrated to the existing television, personal computer and videogame system equipment."
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`('096 patent, col. 1 :14-18; see also D.I. 73 at 8 (Plaintiffs counsel explaining that the patents
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`"describe ways to efficiently process information for the generation and display of 3D images
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`used in video game applications, whether on [personal computers], televisions, or virtual and
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`augmented reality syst~ms")) The Abstract of the patents describes the invention as a "3D
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`videogame system capable of displaying a left-right sequences through a different, independent
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`VGA or video channel, with a display device sharing a memory in an immerse manner." ('096
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`patent, Abstract)
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`C.
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`Procedural History
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`2
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`Plaintiff filed the instant case on April 6, 2017. (D.I. 1) The case was assigned to the
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`Vacant Judgeship docket on April 12, 2017, and referred to the Court on that date "for handling
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`through case-dispositive motions[,]" including "making recommendations as to the resolution of
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`dispositive matters[.]"
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`The parties filed simultaneous opening claim construction briefs on April 20, 2018 and
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`simultaneous responsive briefs on May 18, 2018. (D.I. 52, 53, 57, 59) The Court held a
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`Markman hearing on June 19, 2018. (D.I. 73 (hereinafter, "Tr.")) Following the hearing,
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`Plaintiff submitted a supplemental letter brief to address caselaw newly disclosed by Defendants
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`during the Markman hearing. (D.I. 69)
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`II.
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`STANDARD OF REVIEW
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`It is well-understood that "[a] claim in a patent provides the metes and bounds of the right
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`which the patent confers on the patentee to exclude others from making, using, or selling the
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`protected invention." Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868 F.2d 1251, 125.7
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`(Fed. Cir. 1989). Claim construction is a generally a question oflaw, although subsidiary fact
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`finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837-38
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`(2015).
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`The Court should typically assign claim terms their "'ordinary and customary
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`meaning[,]"' which is "the meaning that the term[ s] would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application." Phillips v. AWHCorp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations
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`omitted). However, when determining the ordinary meaning of claim terms, the Court should
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`not extract and isolate those terms from the context of the patent; rather it should endeavor to
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`3
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`reflect their "meaning to the ordinary artisan after reading the entire patent." Id at 1321; see
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`also Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F .3d 1314, 1320 (Fed. Cir.
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`2016).
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`In proceeding with claim construction, the Court should look first and foremost to the
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`language of the claims themselves, because "[i]t is a bedrock principle of patent law that the
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`claims of a patent define the invention to which the patentee is entitled the right to exclude."
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`Phillips, 415 F.3d at 1312 (internal quotation marks and citations omitted). For example, the
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`context in which a term is used in a claim may be "highly instructive." Id at 1314. In addition,
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`"[o]ther claims of the patent in question, both asserted and unasserted, can ... be valuable" in
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`discerning the meaning of a particular claim term. Id. This is "[b ]ecause claim terms are
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`normally used consistently throughout the patent, [ and so] the usage of a term in one claim can
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`often illuminate the meaning of the same term in other claims." Id Moreover, "[d]ifferences
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`among claims can also be a useful guide[,]" as when "the presence of a dependent claim that
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`adds a particular limitation gives rise to a presumption that the limitation in question is not
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`present in the independent claim.'' Id. at 1314-15.
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`In addition to the words of the claims, the Court should look to other intrinsic evidence.
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`For example, the Court should analyze the patent specification, which "may reveal a special
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`definition given to a claim term ... that differs from the meaning [that term] would otherwise
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`possess" or may reveal an intentional disclaimer of claim scope. Id at 1316. Even if the
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`specification does not contain such revelations, it "is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
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`disputed term." Id at 1315 (internal quotation marks and citation omitted). That said, however,
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`4
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`the specification "is not a substitute for, nor can it be used to rewrite, the chosen claim
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`language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). And
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`a court should also consider the patent's prosecution history, if it is in evidence, because it "can
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`often inform the meaning of the claim language by demonstrating how the inventor understood
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`the invention and whether the inventor limited the invention in the course of prosecution[.]"
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`Phillips, 415 F.3d at 1317.
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`Extrinsic evidence, "including expert and inventor testimony, dictionaries, and learned
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`treatises[,]" can also "shed useful light on the relevant art[.]" Id (internal quotation marks and
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`citations omitted). Overall, while extrinsic evidence may be useful, it is "less significant than the
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`intrinsic record in determining the legally operative meaning of claim language." Id (internal
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`quotation marks and citations omitted); accord Markman v. Westview Instruments, Inc., 52 F .3d
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`967,981 (Fed. Cir. 1995).
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`In utilizing these resources during claim construction, courts should keep in mind that
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`"[t]he construction that stays true to the claim language and most naturally aligns with the
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`patent's description of the invention will be, in the end, the correct construction." Renishaw PLC
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`v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
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`III. DISCUSSION
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`The parties currently have disputes regarding eight terms or sets of terms (hereafter,
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`"terms"). 1 This Report and Recommendation addresses the first four terms, in the order in which
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`the parties addressed them at the Markman hearing. The other four terms will be addressed in a
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`forthcoming Report and Recommendation.
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`The parties originally submitted an additional term for claim construction:
`5
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`At the outset, the Court notes that following the submission of claim construction briefing
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`(but prior to the Markman hearing) the parties continued to meet and confer about the
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`appropriate construction for many of the disputed terms at issue, in an effort to narrow the issues
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`in dispute. (See Tr. at 5-6)2 Accordingly, at the beginning of the Markman hearing, Defendants'
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`counsel handed up to the Court a June 18, 2018 e-mail containing a chart of the parties' most
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`recent updated proposed constructions for the relevant terms. (Id. at 6) The Court will refer to
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`this e-mail below as the "June 18 e-mail." Further, during the Markman hearing, as the nature of
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`certain of their disputes was brought into further relief, the parties continued to amend certain of
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`their proposed constructions. Where applicable, then, the Court will focus below on these
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`updated proposed constructions in resolving the parties' disputes.
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`A.
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`"buff er"
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`The claim term "buffer" (or "buffers") appears in, inter aiia, claims 8, 9, 10, 11, 13, 14,
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`"storing [an] ... image in[to] the ... [back]buffer[,]" found in claims 1, 8 and 16 of the '096
`patent and claims 1, 7 and 12 of the '218 patent. (See, e.g., D.I. 52 at 7) Following the Markman
`hearing, however, the parties agreed to the following construction for the term: "placing into and
`then temporarily holding an image in the buffer/backbuffer." (D.I. 68 at 1)
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`2
`This further work was likely necessitated by the fact that in Plaintiffs opening
`claim construction brief, it posited "[n]ewly [p]roposed" constructions, for the first time, for
`several terms. (See, e.g., D.I. 52 at 1, 8, 11, 14, 15, 17) And as this brief was filed
`simultaneously with Defendants' opening claim construction brief, the parties did not have the
`opportunity to fully hash out the disputed issues pertaining to the relevant terms in their briefing.
`(See, e.g., D.I. 57 at 1 (Defendants noting in their answering claim construction brief that "it has
`been difficult for Defendants to know the constructions to which it should respond to help the
`Court understand the true disputes")) Accordingly, for many of the disputed terms, the Court's
`discussion will largely focus on the transcript from the Markman hearing, where a number of
`these disputes crystallized.
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`6
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`16, 17, 18 and 19 of the '096 patent, and claims 7, 8, 11, 12 and 13 of the '218 patent. The use of
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`the disputed term in claims 8 and 13 of the '096 patent is representative. Accordingly, these
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`claims are reproduced below, with the disputed term highlighted:
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`8. A method in a videogame system for displaying videogame
`images to a user, comprising the computer implemented steps of:
`opening first and second buffers in a memory of the video game
`system;
`storing a videogame image in the first buffer;
`determining when the videogame image is a two-dimensional
`image or a three-dimensional image, wherein when the videogame
`image is a two-dimensioned image, displaying the videogame
`image stored in the first buffer to a user, and
`wherein the videogame image is a three-dimensional image,
`calculating a second camera position view image from the
`videogame system,
`storing the second camera position view image in the second
`buffer, and
`simultaneously displaying the images in the first and second
`buffers to create a three dimensional perspective of the image to
`the user.
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`('096 patent, col. 14:12-32 (emphasis added))
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`13. The method of claim 8, wherein the first and second buffers
`are backbuffers.
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`(Id., col. 14:50-51 (emphasis added))
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`The parties' current competing proposed constructions for "buffer" are set out in the chart
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`below:
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`Term
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`buffer
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`Plaintiff's Construction
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`Defendants' Construction:
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`memory location for
`temporary storage of data
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`memory location for
`temporary storage of image-
`related data
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`(June 18 e-mail; Tr. at 12, 36) As reflected in these proposals, the crux of the parties' dispute
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`with respect to "buffer" is whether, in the context of the inventions disclosed in the asserted
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`7
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`patents, the term refers to a memory location that temporarily stores: (1) any kind of data; or (2)
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`image-related data. (See Tr. at 12-13; D.I. 59 at 1)3
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`Although Plaintiffs original proposed construction for the term reflected that a "buffer"
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`was associated with storing images, 4 Plaintiff now argues that the person of ordinary skill in the
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`art at the time of the invention would have understood "buffer" to mean a memory location that
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`may "store any type of data[.]" (D.I. 59 at 1; see also D.I. 52 at 15; Tr. at 12, 14, 17, 22, 37;
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`Plaintiffs Markman Presentation Slides, Slide 15) In support, Plaintiff primarily cites to a
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`dictionary definition of "buffer" that defines the term as a "region of inemory reserved for use as
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`an intermediate repository in which data is temporarily held while waiting to be transferred
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`between two locations or devices." (D.I. 59 at 1 & n.l (emphasis added) (quoting Microsoft
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`Computer Dictionary (5th ed. 2002) at 76); see also Plaintiffs Markman Presentation Slides,
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`Slide 15)
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`Plaintiff points out that certain claims of the asserted patents recite, in addition to a
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`"buffer," other memory-related buffer terms-i.e., "backbuffer" and "frontbuffer." (D.I. 59 at 1)
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`Plaintiffs contend that while "buffers" may store any kind of data, it is these other specialized
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`forms of buffers (backbuffers and frontbuffers) that are specifically configured to temporarily
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`store image-related data. (Id.; Tr. at 14-15, 17, 22) These terms are not meant to be synonyms,
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`3
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`While "any kind of data" could encompass text documents, images, audio clips,
`software programs, or other types of data, (see Plaintiffs Markman Presentation Slides, Slide 20;
`Tr. at 23, 39), image-related data, on the other hand, refers to the data that essentially makes up
`an image, such as header information, pixel array information, and descriptors for color and
`brightness, (see Plaintiffs Markman Presentation Slides, Slide 20; Tr. at 23, 36).
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`4
`Plaintiffs original proposed construction for "buffer" was "[a]ny memory
`location where the image to be displayed is temporarily 'drawn' without outputting it to the
`video card." (D.I. 52 at 14 (emphasis added))
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`8
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`

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`Plaintiff insists, and thus "buffer" must be construed more broadly than backbuffer and
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`frontbuffer. (D.I. 59 at 1) To demonstrate that these terms should not be construed
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`synonymously, Plaintiff points to, for example, dependent claim 13 of the '096 patent, which
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`limits the type of buffer being utilized to a backbuffer. (Tr. at 15-16, 37)
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`For their part, Defendants assert that while it may be true that, as a general matter, a
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`"buffer" is a memory location for the storage of data, in the context of the asserted patents, the
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`term "buffer" is used only in relation to the storage of images and image-related data. (D.1. 57 at
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`16 ("Whether [the claimed] buffers theoretically could store other types of 'data' other than
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`images is irrelevant, and not discussed by the specification or recited in the claims."); Tr. at 32,
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`35-36) During the Markman hearing, Defendants clarified that while their proposal does not
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`necessarily preclude the claimed buffers from storing additional data, such buffers must contain
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`image-related data. (Tr. at 41)
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`The Court agrees with Defendants. In each and every claim that includes the term
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`"buffer," that component is utilized to store an image. (See, e.g., '096 patent, cols. 14:12-43, 53-
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`56, 15:11-16:21; '218 patent, col. 14:18-42, 52-65; Tr. at 34 (Defendants' counsel noting that "in
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`the claims" it is "images" that are stored in the buffers)) Indeed, Plaintiff itself acknowledges
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`that inrepresentative claim 8, the "buffers" recited therein "are fully functional as independent
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`temporary storage locations for the data specified in the claim-an 'image' temporarily stored in
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`the 'first buffer' and the 'second camera position view image' temporarily stored in the 'second
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`buffer."' (D.1. 59 at 2 ( emphasis added)) Yet Plaintiffs briefing did not point to any portions of
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`9
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`the intrinsic record that support the notion that-in the context of these claims-buffers could
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`store any kind of data ( other than, or to the exclusion of, image-related data).5 (See D.I. 57 at 3)
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`During the Markman hearing, when pressed on the question of whether any portions of
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`the patents' specifications describe the storage in a buffer of anything other than image-related
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`data, Plaintiffs' counsel cited to three portions thereof. (Tr. at 20-21) However, the Court has
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`reviewed these citations, and none of them support the notion that the "buffer" recited in the
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`claims stores something other than image-related data. (See '096 patent, col. 5:50 (explaining
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`that Figure 5 depicts the graphical adapter that "allows the information handling of the data
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`associated with the images set"); id., col. 6:7-9 ("Typically, the central processing unit processes
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`software in order to generate geometric data referring to the image to be displayed[.]"); id., col.
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`6:67 (referring to the transfer of "backbuffer data to the screen"); see also Tr. at 32 (Defendants'
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`counsel noting that "the portions of the specification cited by [P]laintiff do not actually discuss
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`storage of any kind of non-image-related data in a buffer"))6 When read in the context of the
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`5
`During the Markman hearing, Plaintiffs counsel seemed to essentially
`acknowledge that Plaintiffs proposed construction for "buffer" was geared to the term in the
`abstract, isolated from the context of the patent. To that end, when the Court asked if a buffer
`could only include the kind of data that has nothing to do with an image, Plaintiffs counsel
`responded that it could "[w]ithout question" but added whether a buffer can do so "in the video
`game concept, particularly as these claims are related[,] [i]t may or may not. That's not for us to
`say, but it has potential for including different types of information[.]" (Tr. at 38) The Court's
`goal in construing claim terms, however, must be to reflect their "meaning to the ordinary artisan
`after reading the entire patent." Phillips, 415 F.3d at 1321 (emphasis added).
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`6
`With respect to Plaintiffs argument that its proposal must be adopted in order to
`distinguish between the various buffer terms, in the Court's view, the usage of the buffer-related
`terms in the relevant claims would not be inconsistent with Defendants' proposed construction.
`For instance, while claim 8 of the '096 patent can be read as broadly allowing for the image to be
`stored in a "buffer" in general, claim 13 of that patent can be read as narrowing the claim to
`require storage in a particular kind of "buffer"-a backbuffer ( as opposed to, for example,
`disclosing storage in a frontbuffer, which is claimed in claim 14 of the '096 patent).
`10
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`

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`asserted patents, the term "buffer" clearly serves as a memory location for the temporary storage
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`of image-related data. See, e.g., Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363
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`(Fed. Cir. 2016) ("The only meaning that matters in claim construction is the meaning in the
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`context of the patent.").
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`For these reasons, the Court recommends that the term "buffer" be construed as "memory
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`location for temporary storage of image-related data."
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`B.
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`"backbuffer"
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`The claim term "backbuffer" appears in claims 1, 2, 3, 6, 7 and 13 of the '096 patent, and
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`claims 1 and 6 of the '218 patent. The use of the disputed term in claims 1 and 13 of the '096
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`patent is representative. Claim 13 is reproduced above, and claim 1 recites:
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`1. A method of displaying images in a video game system that
`supports two-dimensional and three-dimensional display of the
`images, said method comprising the computer implemented steps
`of:
`clearing left and right backbuffers in the videogame system;
`storing an image into the left backbuffer;
`determining if the image is in a two-dimensional format or a three(cid:173)
`dimensional format, wherein when the image is in a three(cid:173)
`dimensional format, calculating the coordinates of a second view
`position of the image and storing a second view position image
`into the right backbuffer;
`displaying the image stored in the left backbuffer onto one or more
`displays when the image is in a two-dimensional format; and
`simultaneously displaying the images stored in the left and right
`backbujfers onto the one or more displays to create a three
`dimensional perspective of the image to a user when the image is
`in a three-dimensional format.
`
`('096 patent, col. 13:39-58 (emphasis added)) The parties' current competing proposed
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`constructions for "backbuffer" are set out in the chart below:
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`11
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`

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`Term
`
`back buffer
`
`Plaintifr s Construction
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`Defendants' Construction
`
`memory location for
`temporary storage of an
`image before being
`transferred to a frontbuffer
`
`memory location for
`temporary storage of an
`image without being
`transferred to the display
`
`or
`
`memory location for
`temporary storage of an
`image without outputting to
`the display, before being
`transferred to a front buff er
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`(June 18 e-mail; Tr. at 29-30, 43-44)
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`In support of its proposal, Plaintiff explains that: (1) a backbuffer is not actually
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`responsible for outputting data stored therein; and (2) that the memory contents of a backbuffer
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`are always transferred to afrontbuffer before they are displayed on a screen. (Tr. at 27-28, 39-
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`40) Thus, any construction for the term "backbuffer," in Plaintiffs view, should get across these
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`two points. (Id. at 28, 39-40) Plaintiff criticized Defendants' respective proposals in the above
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`chart as failing to make one or the other of these points clearly enough. 7
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`In response, Defendants' counsel clarified Defendants' view that the backbuffer's
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`memory contents are not transferred directly to a display, and that instead, the memory contents
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`are transferred to a frontbuffer, where they are then pulled out to a display. (Id. at 42)
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`Accordingly, Defendants explained that they would not object to modifying their proposal to
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`make clear that data is transferred from a backbuffer to a frontbuffer-i.e., construing
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`7
`As to the first of these two issues, Defendants confirmed that their proposals were
`not intended to convey that the backbuffer itself is the thing responsible for transferring or
`outputting an image to the frontbuffer. (Tr. at 30) The Court agrees that neither of Defendants'
`proposals convey this, and will thus not discuss the issue further.
`12
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`"backbuffer" as "memory location for temporary storage of an image without outputting to the
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`display, before being transferred to a front buffer" ( the second of Defendants' two proposals
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`above). (See id. at 43-44) When pressed as to why they found Plaintiffs proposal wanting,
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`Defendants' counsel explained that the construction for "backbuffer" should make clear the
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`difference between a "backbuffer" and a "frontbuffer." That is, a frontbuffer is the location from
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`where the memory contents are output to the display, while the back buffer does not have its
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`memory contents output to the display. (Id. at 43) Defendants also noted that their proposed
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`language aligns more closely with that in the patent specification, (id. at 42-43), which states that
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`"[a] backbuffer is used, which is a memory location where the image to be displayed is
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`temporarily 'drawn' without outputting it to the video [display][,]" ('096 patent, col. 6:40-42). 8
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`It appears undisputed that a backbuffer temporarily stores an image to be displayed: (1)
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`without outputting it to the display and (2) before that image is transferred to a frontbuffer. In
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`light of this, and the parties' arguments regarding this term, the Court recommends that
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`"backbuffer" be construed to mean "memory location for temporary storage of an image without
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`it being outputted to the display, and before being transferred to a frontbuffer."
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`8
`Although this portion of the specification actually states "without outputting it to
`the video card," ('096 patent, col. 6:41-42 (emphasis added)), Defendants' counsel believes that
`the patentee actually meant without outputting it to the video "display[,]" (Tr. at 42-43). The
`Court agrees with Defendants in light of the fact that the specification next states: "If this is
`done directly on the video memory screen, a flicker on the screen would be observed; therefore
`the information is drawn and processed quickly in the backbuffer. This backbuffer is usually
`located within the physical RAM memory of the video or graphics acceleration card." ('096
`patent, col. 6:40-47 (emphasis added)) Plaintiff acknowledges that the specification's definition
`of "backbuffer;" with its reference to "without outputting it to the video card," "is not true in
`every instance" given the language in the specification just emphasized, as "an image cannot be
`output to something-the video card-when it is already located on the video card." (D.I. 59 at
`3; see also Tr. at 68-69 (Plaintiffs counsel suggesting that the patentee meant without outputting
`it to the "video screen"))
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`13
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`Case 1:17-cv-00386-VAC-CJB Document 74 Filed 08/15/18 Page 14 of 20 PageID #: 874
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`C.
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`"left backbuffer" and "right backbuffer"
`
`The claim terms "left backbuffer" and "right back buff er" appear in claims 1, 2, 3, 6 and 7
`
`of the '096 patent, and claims 1 and 6 of the '218 patent. The use of the disputed terms in claim 1
`
`of the '096 patent, reproduced above, is representative. Generally, the left backbuffer stores an
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`image that is displayed to a user's left eye or the left camera view, whereas the right backbuffer
`
`stores an image that is displayed to a user's right eye or the right camera view; these images can
`
`ultimately be simultaneously displayed onto a display to create a 3D perspective of the image to
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`a user. (See '096 patent, col. 13:45-57; Tr. at 52, 54-55) The parties' current competing
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`proposed constructions for "left backbuffer" and "right backbuffer" are set out in the chart
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`below:
`
`,
`
`Term
`
`left/right backbuff er
`
`(June 18 e-mail; Tr. at 44)
`
`Plaintiff's Construction
`
`Defendants' Construction
`
`a memory location where the
`(left or right) image is
`temporarily stored
`
`backbuffers that are separate
`from, and not connected to,
`each other
`
`Thus, coming into the Markman hearing, the crux of the dispute between the parties with
`
`respect to these claim terms was whether a left backbuffer and a right backbuffer are required to
`
`be "separate from" each other (and relatedly, what exactly such "separateness" connotes). (See
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`D.I. 53 at 4; D.I. 59 at 5 (Plaintiff asserting that Defendants' proposed "separate from ... each
`
`other" limitation is flawed and inherently ambiguous-"Are the backbuffers in different physical
`
`memory locations on the same memory circuit, or are they totally different circuits? Or do
`
`Defendants mean the backbuffers are merely programmatically separated?"); Tr. at 45)
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`Defendants' proposed "separate" limitation is derived from arguments the patentee made
`
`during prosecution of the '096 patent. (D.I. 53 at 4; D.I. 57 at 5; Tr. at 53) Specifically, in a
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`14
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`Case 1:17-cv-00386-VAC-CJB Document 74 Filed 08/15/18 Page 15 of 20 PageID #: 875
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`December 11, 2008 Office Action, the Examiner rejected pending claims as obvious over, inter
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`alia, United States Patent No. 5,801,717 ("Engstrom"). (D.I. 54, ex. 2 at 7-8) This rejection led
`
`to a telephonic interview between the Examiner and the applicant on September 18, 2009, in
`
`which they discussed the applicant's arguments as to why Engstrom was distinguishable from
`
`the pending claims. (Id., ex. 3) The Examiner's Interview Summary notes that:
`
`Applicants argued that the two back buffers disclosed in Engstrom
`were connected and not separate therefrom such that [two] left and
`right independent images could be generated and stored therein.
`Examiner argued that even though the backbuff ers of Engstrom
`were connected in that data could be transferred there between, the
`buffers were still independent buffers. Applicants described the
`invention as providing images [] in the left backbuffer only for 2-D
`views and providing left images in the left backbuffer for left eye
`3-D views and right images in the right backbuffer for right eye 3-
`D views.
`
`(Id. at TVIP 000251) Thus, Defendants contend that this portion of the prosecution history
`
`demonstrates that "the separateness ofbackbuffers was a critical basis for the applicant's attempt
`
`to distinguish Engstrom" and that the construction for "left backbuffer" and "right backbuffer"
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`must take this into account. (D.I. 53 at 5; see also D.I. 57 at 5)
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`During the Markman hearing, the parties' positions regarding the "separateness" issue
`
`were further explored. As it turns out, the parties appear to be on the same page.
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`For their part, Defendants explain that what they mean by "separate from, and not
`
`connected to, each other" is that at any given point in time, if the left and right backbuffers are
`
`both being used to store images, then at that point in time these respective left and right
`
`backbuffers cannot and will not be storing the same images. Instead, at such a point in time, the
`
`two backbuffers constitute separate memory locations that store images separately. (Tr. at 50-
`
`53) And Defendants' view of separateness does not exclude the concept of "buffer swapping,"
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`15
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`Case 1:17-cv-00386-VAC-CJB Document 74 Filed 08/15/18 Page 16 of 20 PageID #: 876
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`whereby left and right backbuffers could be located in the same physical memory location, i.e., a
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`left backbuffer could become a right backbuffer and vice versa. (Id at 52-53)
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`Likewise, Plaintiff agrees that at a given time, programmatically, the left and right
`
`backbuff ers constitute separate memory locations, meaning they cannot be storing the same
`
`image at that point in time. (Id at 47-48, 54, 55; D.I. 52 at 5 (Plaintiff acknowledging that the
`
`"right and left backbuffers are separate memory locations")) The left backbuffer stores images
`
`for a left view or left camera position, while the right backbuffer stores images for right view or
`
`right camera position. (Tr. at 55) Yet Plaintiff explained that it is possible that the right and left
`
`backbuffers could be located in exactly the same physical memory location, meaning they could
`
`swap, such that a right backbuffer could at some later point become a left backbuffer. (Id at 48-
`
`49)
`
`The parties' ultimately consistent view of what it means for the left and right backbuffers
`
`· to be "separate" makes sense in terms of the cited portion of the prose