Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 1 of 9 PageID #: 887
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
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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. ("Plaintiff') against Oculus VR,
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`LLC ~nd Facebook, Inc. (collectively, "Defendants"), Plaintiff alleges infringement of United
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`States Patent Nos. 7,666,096 (the '"096 patent") and 8,206,218 (the '"218 patent"). Presently
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`before the Court is the matter of claim construction. The Court recommends that the District
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`Court adopt the constructions as set forth below.
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`I.
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`BACKGROUND AND STANDARD OF REVIEW
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`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)
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`II.
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`DISCUSSION
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`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. The instant Report and Recommendation
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`addresses terms five and six. The final two terms will be addressed in a forthcoming Report and
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`Recommendation.
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 2 of 9 PageID #: 888
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`A. "storing a[n] [videogame] image in[to] the [left/first] [back]buffer; determining
`[if/when] the [videogame] image is [in] a two-dimensional [format/image] or a
`three-dimensional [format/image]"
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`Claims 1, 8 and 16 of the '096 patent recite the steps "storing a[ n] [ video game] image
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`in[to] the [left/first] [back]buffer; determining [if/when] the [videogame] image is [in] a two(cid:173)
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`dimensional [format/image] or a three-dimensional [format/image.]" The recitation of these
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`steps is representative in claim 1, and for ease of reference the Court again reproduces that claim
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`below, with these steps emphasized:
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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 backbujfer;
`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 backbuff er 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
`backbuffers 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.
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`('096 patent, col.13~39-58 (emphasis added))
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`The parties' sole dispute with respect to this claim term is whether these two steps (the
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`"storing" step and the "determining" step) must be performed in the order in which they appear
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`in the claim (i.e., that the storing step must be performed before the determining step). (D.I. 52
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`at 6; D.I. 53 at 6; Tr. at 75) Plaintiff asserts that they do not need to be performed in this order;
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`Defendants argue that they do. (D.I. 52 at 6; D.I. 53 at 6)
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`2
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 3 of 9 PageID #: 889
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`Federal Circuit caselaw states that "unless the steps of a method claim actually recite an
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`order, the steps are not ordinarily construed to require one." Mformation Techs., Inc., v.
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`Research In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (internal quotation marks,
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`citation and brackets omitted); see also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369
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`(Fed. Cir. 2003). In determining whether steps "actually recite an order," a two-part test is used.
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`Altiris, Inc., 318 F.3d at 1369 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d
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`1323 (Fed Cir. 2001)). First, a court looks to the claim language to determine whether, as a
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`matter of logic or grammar, the steps must be performed in the order written. Mformation
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`Techs., Inc., 764 F.3d at 1398-99; Altiris, Inc., 318 F.3d at 1369. If not, then the court examines
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`the rest of the specification, in order to assess whether it directly or implicitly requires such a
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`construction. Mformation Techs., Inc., 764 F.3d at 1398-99; Altiris, Inc., 318 F.3d at 1370. If it
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`does not, then the sequence in which such steps are written is not a requirement. Altiris, Inc.,
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`318 F.3d at 1370.
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`With respect to step one of this test, Plaintiff contends that there is no matter oflogic or
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`grammar that requires the storing step to be performed prior to the determining step. (D.1. 52 at
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`7) 1 Specifically, Plaintiff argues that the claim does not use language such as "first," "then," or
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`"after," which would explicitly require such an order. (Tr. at 77) Plaintiff also points to a
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`Plaintiff also argues, without any citation to the patent specification, that if the
`storing and determining steps were to be switched (such that the determining step came first),
`this would be advantageous in that it would "save a significant amount of processing time"
`because "[s]ubstantial processing time is inherently lost if the processor has to nin a separate
`determining step after each storage step for each image." (D.I. 52 at 7) However, as Defendants
`note, (D.I. 57 at 6-7), Plaintiffs assertion amounts to nothing more than attorney argument, since
`the Court has been presented with nothing in the intrinsic or extrinsic record to support it, see
`Virginia Innovation Scis., Inc. v. Samsung Elecs. Co., 614 F. App'x 503, 511 (Fed. Cir. 2015)
`("[A]ttorney arguments are not relevant intrinsic or extrinsic evidence[.]").
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`3
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 4 of 9 PageID #: 890
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`limitation in claim 1 that surely does make clear that an order is required-"displaying the image
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`stored in the left backbuffer ... [.]" (D.I. 59 at 9) Obviously, the way this "displaying" step is
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`written (i.e., that "the image [already] stored" is the thing to be displayed), it cannot occur until
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`after the storing step has taken place. Thus, Plaintiff argues, when the patentee wanted to recite a
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`specific order, it knew how to do so.
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`In the Court's view, the matter is in fact settled at step one, but not in Plaintiffs favor.
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`(D.I. 53 at 7 (Defendants arguing that "there is no need to proceed beyond the first step because
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`the grammar and logic of the claims clearly require that the steps be performed in the order
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`recited")) Most significant to the Court's decision here is the importance of certain language in
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`the determining step. After claim 1 recites "storing an image into the left backbuffer," the next
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`listed step is "determining if the image is in a two-dimensional format or a three-dimensional
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`format[.]" ('096 patent, col. 13:45-47 (emphasis added))2 What image is it that the videogame
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`system is making this determination about? The answer, grammatically and logically seems
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`obvious: it is the "image" that has previously been stored (the only "image" that is referred to in
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`the body of the claim before the "determining" step is set out).3 (D.I. 53 at 7; D.I. 57 at 6; Tr. at
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`83, 85, 87); see Wi-Lan, Inc v. Apple, Inc., 811 F.3d 455,462 (Fed. Cir. 2016) ("Subsequent use
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`of the definite articles 'the' or 'said' in a claim refers back to the same term recited earlier in the
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`claim."); SCVNGR, Inc. v. DailyGobble, Inc., CASE NO. 6:15-CV-493-JRG-KNM, 2017 WL
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`2
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`Substantially similar language also appears in claims 8 and 16. ('096 patent, cols.
`14:17-18, 15:17-19)
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`3
`The fact that the storing step refers to "an image" also seems significant. The use
`of the word "an" suggests that this is purposefully the first time that the image is referred to in
`the body of the claim. Thus when that image is referred to again in the determining step, it is
`referred to as "the image"-the one previously stored.
`4
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 5 of 9 PageID #: 891
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`4270200, at *IO (E.D. Tex. Sept. 26, 2017) ("Step (b) recites 'transmitting ... the code'
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`generated in step (a), so step (a) must be performed before step (b).") (emphasis omitted).
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`In addition to the strength of this "antecedent basis" argument, the Court notes that the
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`structure of the remaining claim limitations also suggests that the storing and determining steps
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`(and indeed, certain other steps) must occur in their listed order. The first limitation in claim 1
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`requires the "clearing [of the] left and right backbuffers in the videogame system." ('096 patent,
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`col. 13:43-44) And then the storing step is listed, stating that the method requires "storing an
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`image into the left backbuffer." (Id., col. 13:45) It makes both grammatical and logical sense
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`that the method would first require clearing the left backbuffer so that the backbuffer is then
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`ready for an image to be stored in it. Next, the limitation immediately after the storing and
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`determining steps is the displaying step. Above, the Court has already explained why that
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`limitation must follow the storing step; it must also come after the determining step, because the
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`displaying step requires that the system know whether the image to be displayed is two(cid:173)
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`dimensional, and that analysis happens in the determining step. As for the last claim
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`limitation-the "simultaneously displaying" limitation-it requires that images already stored in
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`the left and right backbuffers must be displayed simultaneously. (Id., col. 13:54-57) And so it
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`stands to reason that this step has to come after the storing and determining steps set out before it
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`in the claim, since, inter alia, those two limitations are the ones that describe how images are
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`stored in the left and right backbuff ers in the first place. 4
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`For these reasons, the Court will construe the "storing" and "determining" steps to
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`require that the steps must occur in the order recited in the claims.
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`4
`Again, though claims 8 and 16 use somewhat different language, they too suggest
`a required order for their steps. ('096 patent, cols. 14:12-32, 15:12-16:9)
`5
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 6 of 9 PageID #: 892
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`B. "videogame"
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`The claim term "videogame" appears in claims 1, 5, 8, 12, and 16 of the '096 patent, and
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`claims 1, 2, 7, and 8 of the '218 patent. 5 The parties' current competing proposed constructions
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`for the term are set out in the chart below:
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`Term
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`videogame
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`Plaintiff's Construction
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`Defendants' Construction
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`a software program written in a software program written in
`some computer language,
`some computer language with
`with its objective to simulate
`its objective to simulate a
`a non-existent world and take non-existent world and take a
`a player or user into [this]
`player or user into this world,
`world
`which has a process which
`starts by providing a plurality
`of independently related
`logical states which include a
`set of programming options,
`where each programming
`option corresponds to
`different image
`characteristics
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`(June 18 email)
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`Plaintiff's proposed construction is derived from the definition set out in the
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`"Background of the Invention" portion of the specification. (D.I. 53 at 3) There, the
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`specification explains that "[a]ny videogame is a software program written in some computer
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`language. Its objective is to simulate a non-existent world and take a player or user into this
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`world." ('096 patent, col. 3:53-55; '218 patent, col. 3:53-55) Meanwhile, Defendants' proposed
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`construction incorporates this language, but also includes additional language found in the
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`"Detailed Description of the Invention" section of the specification, which notes that:
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`5
`The term "video game" appears in the patent claims not only as part of the phrase
`"videogame system," (see, e.g., '096 patent, col. 13 :39), but also as a standalone term (i.e., "the
`videogame"), (id., col. 14:3).
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`6
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 7 of 9 PageID #: 893
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`Videogames are processes which start by providing a plurality of
`independently related logical states which include a set of
`programming options, where each programming option
`corresponds to different image characteristics.
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`('096 patent, col. 5:64:-67; '218 patent, col. 5:64-67) The dispute here is whether the final
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`construction should include this additional language. The Court finds that it should.
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`It is of course true that"[ w]hen a patentee explicitly defines a claim term in the patent
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`specification, the patentee's definition controls." Martek Biosciences Corp. v. Nutrinova, Inc.,
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`579 F.3d 1363, 1380 (Fed. Cir. 2009). Yet Plaintiff argues that while its proposed construction
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`contains language the patentee used to define "videogame," Defendants' additional language is
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`not an example of the patentee acting as his own lexicographer. More specifically, Plaintiff
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`claims that the disputed language offered by Defendants misrepresents the term in question by
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`describing not what a videogame is, but instead how a videogame is generally designed. (D.I. 52
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`at 3-4; D.I. 59 at 15)
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`The Court disagrees with Plaintiffs logic. 6 There are certainly many ways in which the
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`patentee could have chosen to describe what a ''videogame" is. He might have done so in part
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`(as both parties here agree that he did) by defining a videogame in terms of its objective. But he
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`also could have defined it (in part) by reference to its design (i.e., by reference to how it
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`"start[ s ]" or the type of "programming options" that it contains). Indeed, both Plaintiffs
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`construction (the part that comes from the "Background of the Invention" section) and the
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`disputed portion of Defendants' construction (the part that is found in the "Detailed Description
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`6
`Plaintiff also confusingly argues that the disputed portion of Defendants'
`proposed construction is both "too broad" and yet also contains "far more detail than
`necessary[.]" (D.I. 59 at 15-16) If a proposed construction is simultaneously derided as being
`too broad and too narrow, perhaps that is a sign that it is just right.
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`7
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 8 of 9 PageID #: 894
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`of the Invention" section) are preceded by phraseology typically indicating that a definition is to
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`follow (i.e., "[a]ny videogarne is ... " and "[v]ideogarnes are ... ").7 See (Tr. at 98); see also
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`Sinorgchem Co. v. Int'[ Trade Comm 'n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) ("[T]he word 'is,'
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`... a term used here in the specification, may signify that a patentee is serving as his own
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`lexicographer.") (internal quotation marks and citation omitted); France Telecom, S.A. v. Marvell
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`Semiconductor, Inc., Case No. 12-cv-04967-WHO, 2014 WL 1007449, at *4 (N.D. Cal. Mar. 12,
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`2014) (finding that when the patent used the phrase "convolutional codes are ... " that was a sign
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`that the patentee was "acting as his own lexicographer") (internal quotation marks and brackets
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`omitted).
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`In the end, in construing this claim term, it does not make sense to omit definitional
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`language found in the part of the patent that describes, in detail, the disclosed invention. For the
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`reasons set forth above, the Court recommends that "videogarne" be construed to mean "a
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`software program written in some computer language with its objective to simulate a non(cid:173)
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`existent world and take a player or user into this world, which has a process which starts by
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`providing a plurality of independently related logical states which include a set of programming
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`options, where each programming option corresponds to different image characteristics."
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`III. CONCLUSION
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`For the foregoing reasons, the Court recommends that the District Court adopt the
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`7
`If anything, as Defendants argue, (D.I. 53 at 3; D.I. 57 at 4; Tr. at 99-100), the
`disputed portion of their proposed construction might be seen as the more reliable indicator of
`what the term "videogame" means in relation to the inventions described in the claims. That is
`because it is found in a section purporting to provide a detailed description of the invention,
`while the entirety of Plaintiffs proposed construction comes from a portion of the patent
`discussing only background of or relating to the invention. Cf Verizon Servs. Corp. v. Vonage
`Holding Corp., 503 F.3d 1295, 1304 (Fed. Cir. 2007).
`8
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`

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`Case 1:17-cv-00386-VAC-CJB Document 76 Filed 08/30/18 Page 9 of 9 PageID #: 895
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`following constructions:
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`1.
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`The steps of "storing a[n] [videogame] image in[to] the [left/first] [back]buffer;
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`determining [if/when] the [videogame] image is [in] a two-dimensional [format/image] or a
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`three-dimensional [format/image]" shall be limited to that order
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`2.
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`"videogame" should be construed to mean "a software program written in some
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`computer language with its objective to simulate a non-existent world and take a player or user
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`into this world, which has a process which starts by providing a plurality of independently
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`related logical states which include a set of programming options, where each programming
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`option corresponds to different image characteristics"
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`This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(l)(B), Fed. R.
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`Civ. P. 72(b)(l), and D. Del. LR 72.1. The parties may serve and file specific written objections
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`within fourteen (14) days after being served with a copy of this Report and Recommendation.
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`Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the
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`loss of the right to de novo review in the district court. See Henderson v. Carlson, 812 F.2d 874,
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`878-79 (3d Cir. 1987); Sincavage v. Barnhart, 171 F. App'x 924,925 n.1 (3d Cir. 2006).
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`The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R.
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`Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website,
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`located at http://www.ded.uscourts.gov.
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`Dated: August 30, 2018
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`Christopher J. Burke
`UNITED STATES MAGISTRATE JUDGE
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`9
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