REPORT AND RECOMMENDATION

CHRISTOPHER J. BURKE, Magistrate Judge.

In this action filed by Plaintiff Techno View IP, Inc. ("Plaintiff") against Facebook Technologies, LLC and Facebook, Inc. (collectively, "Defendants"), Plaintiff alleges 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 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 background of this matter set out in its August 15, 2018 Report and Recommendation ("August 15 R&R"). (D.I. 74 at 1-3) It additionally incorporates by reference the legal principles 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 August 15 R&R addressed the first four terms. On August 30, 2018, the Court issued a Report and Recommendation that addressed terms five and six. (D.I. 76) The final two terms are addressed herein.

A. The various "coordinates" terms

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 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 Claims 7 and 9 of the '218 patent are exemplary with respect to usage of these terms, reproduced below:

('218 patent, col. 14:18-38 (emphasis added))

(Id., col. 14:43-47 (emphasis added))

According to Defendants, in each of the claims at issue, the various coordinates terms are 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 other set of coordinates), as set out below:

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:

The Court now turns to the parties' current competing proposed constructions for the various "coordinates" terms. They are as follows:

(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]oints in space that are located by their positions in relation to intersecting x, y, and z axes" — in other words, limiting the term to coordinates in a Cartesian coordinate system that take the form of (x, y) for two dimensions and (x, y, z) for 3 dimensions, (D.I. 53 at 11-12 (emphasis added)) — their revised proposed construction is "not specifically tied to [C]artesian coordinates[,]" (Tr. at 110; see also id. at 109).3

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) Plaintiff's 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 set of values . . . that may include . . . linear and rotational components as well." (Tr. at 104)

The decision here was difficult, as the material relating to the "coordinates" terms is complex and the parties' arguments were not always easy to understand. In the Court's view, however, Defendants' position seems the better one. It so concludes for a few reasons. 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 "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 data associated to the xyz coordinates of the object's image in real-time[.]" ('096 patent at Abstract; '218 patent at Abstract; see also, e.g., '096 patent, FIG. 8; cols. 4:6-7; 4:40; 12:17-18; 12:49, 12:54-56; 12:57-59; 12:63-64; 13:16, 13:18-19)

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 at 12-13; see also D.I. 57 at 10; Tr. at 108) And as Defendants noted, there are circumstances 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.I. 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 Plaintiff's arguments to the contrary to be persuasive. The Court takes up those arguments in detail below.

One of Plaintiff's 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):

('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:

('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 Plaintiff's 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:

('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 turn, shows three examples of x, 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 Plaintiff's 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." (Plaintiff's 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:

('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 Plaintiff's 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 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"

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:

('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, ¶ 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:

(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:

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 for process 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. O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1582-83 (Fed. Cir. 1997). In other words, "means-plus-function limitations are found in apparatus claims, whereas step-plus-function limitations are found in method claims." Dynamic Dig. Depth Research Pty. Ltd. v. LG Elecs., Inc., Case No. CV 15-5578-GW(Ex), 2016 WL 7444569, at *11 (C.D. Cal. Nov. 7, 2016); see also Free Stream Media Corp. v. Alphonso Inc., Case No. 2:15-CV-1725-RWS, 2017 WL 1165578, at *31 (E.D. Tex. Mar. 29, 2017) ("Claim 14 is a method claim, which requires step-plus-function analysis.").

On the current record, the Court is not in a position to resolve the parties' disputes with respect to this term. The Court's difficulty in deciding the parties' dispute is that Defendants argued that this term should be construed as a means-plus-function limitation with a corresponding structure set out in the specification — despite the fact that the term is included in method claims. Accordingly, it appears that the similar-and-yet-different step-plus-function analysis should be employed. As the Court will explain below, the step-plus-function analysis is complex, and as a result, the Court would benefit from further guidance from the parties on the issue in order to sufficiently resolve the dispute.

The Court will first set out what it believes to be the state of the law regarding step-plus-function analysis. Then it will set out a process for obtaining additional argument from the parties.

1. Section 112, Paragraph 6's Application to Method Claims

For method claims, section 112, paragraph 6 is implicated only when a claim element in a method claim recites a step for performing a specified function without the recital of acts in support of the function. O.I. Corp., 115 F.3d at 1583; Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1028 (Fed. Cir. 2002). The Federal Circuit has explained that the term "steps" refers to the generic description of the elements of a process, whereas the "function" of a method claim element corresponds to "what that element ultimately accomplishes in relationship to what the other elements of the claim and the claim as a whole accomplish." Seal-Flex, Inc. v. Athletic Track & Court Constr., 172 F.3d 836, 849 (Fed. Cir. 1999) (Rader, J., concurring) (emphasis in original); O.I. Corp., 115 F.3d at 1583. "Acts," on the other hand, correspond to how the function is accomplished (i.e., to the implementation of the steps of the process). O.I. Corp., 115 F.3d at 1583.5 If Section 112, paragraph 6 is implicated, the limitation must be construed "to cover the corresponding . . . acts described in the specification." 35 U.S.C. § 112, ¶ 6; Agere Sys. Inc. v. Atmel Corp., No. CIV.A 02-864, 2003 WL 21652264, at *22 (E.D. Pa. May 27, 2003).

How does one determine whether Section 112, paragraph 6 is implicated? As an initial matter, merely claiming a step by itself, or a series of steps — without recital of a function — does not implicate Section 112, paragraph 6. O.I. Corp., 115 F.3d at 1583; Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1382 (Fed. Cir. 2004) (A method claim "necessarily recite[s] the steps of the method."); Masco Corp. v. United States, 303 F.3d 1316, 1327 (Fed. Cir. 2002) ("Method claims are commonly drafted, as in this case, by reciting the phrase `steps of' followed by a list of actions comprising the method claimed."). As the Federal Circuit has explained: "[i]f we were to construe every process claim containing steps described by an `ing' verb, such as passing, heating, reacting, transferring, etc. into a step-plus-function limitation, we would be limiting process claims in a manner never intended by Congress." O.I. Corp., 115 F.3d at 1583.6 If, however, a claim element recites a step that is individually associated with a specified function, Section 112, paragraph 6 will be implicated, ifthat element does not also recite the act necessary to perform the step and achieve the function. Epcon Gas, 279 F.3d at 1028; O.I. Corp., 115 F.3d at 1582-83. In other words, if a claim element recites a step for performing a specified function as well as an act in support of the function, Section 112, paragraph 6 will not apply to that claim element. See Neurografix v. Regents of Univ. of Cal., No. 2:11-cv-07591-MRP-RZ, 2012 WL 8281409, at *6 (C.D. Cal. June 13, 2012) ("Next, the Court moves to the critical task of locating an act in the claim language. If the Court does find an act [in the claim element], then . . . [Section 112, paragraph 6] does not apply.").7 But, on the other hand, if a claim element recites a step for performing a specified function without reciting an act necessary to achieve the function, Section 112, paragraph 6 will apply to that claim element. O.I. Corp., 115 F.3d at 1583.8 In such circumstances, as noted above, the Court must then construe the limitation to cover the corresponding acts described in the patent specification. O.I. Corp., 115 F.3d at 1583; Agere Sys., 2003 WL 21652264, at *22.

Step-plus-function limitations implicate a similar presumption to that of means-plus-function limitations. That is, if a claim element recites the phrase "steps for," there is a presumption that it is a step-plus-function limitation. Masco Corp., 303 F.3d at 1326. On the other hand, if the claim element does not recite "steps for" and instead recites, for instance, "steps of," there is no presumption that the limitation is in step-plus-function format. Id.; Cardiac Pacemakers, Inc., 381 F.3d at 1382. If (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 112, paragraph 6 to be implicated. Masco Corp., 303 F.3d at 1327.

In a concurring opinion analyzing the "crucial" issue of whether a particular claim element was a "means-plus-function element, a step-plus-function element, or neither," Judge Rader explained that "[a]lthough similar, means and step-plus-function claim elements are not identical and require distinct analyses." Seal-Flex, 172 F.3d at 847-48; see also In re Neurografix ('360) Patent Litig., 201 F.Supp.3d 206, 216 (D. Mass. 2016) (noting that the Federal Circuit "has not applied an identical analysis" to means-plus-function and step-plus-function limitations). To that end, Judge Rader noted that "[t]he difficulty of distinguishing acts from functions in step-plus-function claim elements [] makes identifying step-plus-function claims inherently more problematic." Seal-Flex, 172 F.3d at 848-49; see also id. at 852 (Bryson, J., concurring) (noting that "the question [of] whether the claim at issue is a step-plus-function claim is a difficult one"). That difficulty stems from the fact that both acts and functions are frequently recited using verbs ending in "ing." Id. at 849.

The Federal Circuit has stressed that when assessing whether Section 112, paragraph 6 is implicated by the claims of a patent, "[e]ach claim must be independently reviewed in order to determine if it is subject to the requirements of [Section 112, paragraph 6]." O.I. Corp., 115 F.3d at 1583. To that end, for example, even if a patent recites an apparatus claim that contains means-plus-function limitations, as well as a method claim that includes nearly identical language to the apparatus claim, that does not mean that the patentee also intended the method claim to be governed by Section 112, paragraph 6. Id. at 1583-84 ("Interpretation of claims would be confusing indeed if claims that are not means- or step-plus-function claims were to be interpreted as if they were, only because they use language similar to that used in other claims that are subject to this provision."); Dynamic Dig. Depth Research, 2016 WL 7444569, at *12. And courts have noted that step-plus-function limitations are "not. . . . often used[.]" Dynamic Dig. Depth Research, 2016 WL 7444569, at *11; see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (noting the "unusual circumstance[]" in which Section 112, paragraph 6 is invoked regarding the functional language of a method claim); Seal-Flex, Inc., 172 F.3d at 848 (Rader, J., concurring) ("This court has rarely examined step-plus-function claim elements[.]").

2. Additional Process Regarding the "With a Processor" Terms

Here, as noted above, Defendants did not engage in a step-plus-function analysis, but instead argued that the term should be construed as a means-plus-function limitation with a corresponding structure set out in the specification. In similar circumstances, some courts have ended the inquiry, simply concluding that the defendant necessarily failed to overcome the presumption that Section 112, paragraph 6 did not apply to the limitation. See Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-cv-1187-JRG-RSP, 2016 WL 3647977, at* 19 (E.D. Tex. July 7, 2016); Evicam Int'l, Inc. v. Enforcement Video, LLC, No. 4:16-CV-105, 2016 WL 6470967, at *20 (E.D. Tex. Nov. 2, 2016) (rejecting defendant's argument that a limitation in a method claim was a means-plus-function term that was indefinite due to a lack of corresponding structure, where the term "is a method step[,]" and where defendant failed to argue that the term was written in "`step-plus-function'" format, such that the defendant did not show how Section 112, paragraph 6 could apply).

The Court will not take that path here, however, largely because the back-and-forth in the briefing on this issue was not great. It was not until Plaintiff's answering brief that it forcefully asserted that Defendants "fail[ed] to identify that claims 1 and 7 are method claims" and thus "failed to apply the correct legal standard" by arguing that the term was a means-plus-function limitation.9 (D.I. 59 at 19; see also id. at 20 ("Defendants have not shown, or even argued, that any limitation in Claims 1 and 7 have `steps plus function without acts.'"); Tr. at 119-20 (Plaintiff's counsel asserting that "[D]efendants wish to construe steps and method claims as means-plus-function. Not step-plus-function, but means-plus-function."))10 In light of the lack of argument on this difficult issue, the Court will benefit from a short, further briefing process. In that regard, by no later than October 25, 2018, Defendants shall file a letter brief of no more than 3 single-spaced pages that further addresses this issue discussed above. By no later than November 1, 2018, Plaintiff shall file a responsive letter brief of no more than 3 single-spaced pages. Shortly thereafter, the Court will issue a Report and Recommendation that further addresses the "with a processor" terms.

III. CONCLUSION

For the foregoing reasons, the Court recommends that the District Court adopt the following construction:

1. the various coordinates terms should be construed to mean "the point(s) in space calculated for each claimed coordinate type (`spatial,' `position,' `view position,' etc.)"

This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R. Civ. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections within fourteen (14) days after being served with a copy of this Report and Recommendation. Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the loss of the right to de novo review in the district court. See Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987); Sincavage v. Barnhart, 171 F. App'x 924, 925 n. 1 (3d Cir. 2006).

The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov.