CHRISTOPHER J. BURKE, Magistrate Judge.
Currently pending before the Court in this patent dispute are two motions for summary judgment. Defendants Microsoft Corporation, Electronic Arts, Inc., and Ubisoft, Inc. (collectively, "Defendants") filed a Motion for Partial Summary Judgment of Noninfringement and No Willful Infringement ("Motion for Summary Judgment of Noninfringement") as to United States Patent Nos. 6,308,565 (the '565 patent"), 6,765,726 (the "1726 patent"), 6,876,496 (the "'496 patent"), 7,359,121 (the "'121 patent"), and 7,791,808 (the "1808 patent"). (D.I. 332; D.I. 333 at 1-4) Defendants also filed a Motion for Partial Summary Judgment of Invalidity ("Motion for Summary Judgment of Invalidity") as to claim 11 of U.S. patent No. 6,430,997 (the "997 patent"),
Invalidity be DENIED.
In this action, Plaintiff Impulse Technology Ltd. ("Plaintiff') asserts six related patents, each of which share a similar specification. (D.I. 333 at 1; see D.I. 4, exs. 1-2 & 4-7) Each of the asserted patents are entitled "System and Method for Tracking and Assessing Movement Skills in Multidimensional Space[.]" (D.I. 4, exs. 1-2 & 4-7) The asserted patents relate to the field of motion tracking and performance assessment. The patents explain that the prior art included various types of virtual reality systems that were used for entertainment purposes or for measuring physical exertion. (See, e.g., '565 patent, col. 4:8-10) However, these systems lacked realism in their presentations and/or provided no measurement or inadequate measurement of physical activity. (Id, col. 4:25-27) The present invention, then, was designed as a system for quantifying physical motion of a player or subject, and providing feedback to facilitate training and athletic performance in part by creating an accurate simulation of sport. (See, e.g., id, col. 4:30-34) To accomplish these purposes, the invention employs: (1) sensing electronics for determining, in essentially real time, a player's three-dimensional positional changes, and (2) computer controlled sport-specific cuing that evokes or prompts specific responses from the player. (Id., col. 4:36-42)
The accused products are video games designed to run on an Xbox 360 video game console with a Kinect sensor. (D.I. 333 at 6; D.I. 334, ex. B at ¶ 20) The Kinect sensor is a motion sensing input device that allows users to interact with the game console using gestures and spoken commands. (D.I. 333 at 6; D.I. 334, ex. B at ¶¶ 20-21) The Kinect sensor is physically separate from the Xbox 360 console, but the console and Kinect sensor are connected by a cable. (D.I. 333 at 32; D.I. 336, ex. 3 at 45-46) In use, the Kinect sensor is ideally positioned above or below the user's television set so that it can track movement in the space in front of the television. (D.I. 333 at 6; D.I. 336, ex. 19 at 1) It includes a front-facing camera that tracks motion within a viewing area (or "cone") located in front of the device. (D.I. 333 at 7; D.I. 336, ex. 3 at ¶ 169) The cone has a horizontal field of view of about 57 degrees, a vertical field of view of about 43 degrees, and a practical depth range of about 0.8-4.0 meters. (Id.) These dimensions form the Kinect sensor's viewing area. (Id.) The following figure, from Plaintiff's answering brief, illustrates a portion of the viewing area of the Kinect sensor:
(D.I. 361 at 10; D.I. 366, ex. 21 at 10) The Xbox 360 and the Kinect together use an algorithm to track the user and determine the location of20 points that correspond to various joints of the user's body, using a coordinate system centered at the Kinect sensor. (D.I. 333 at 6; D.I. 334, ex. B at ¶¶ 21, 94)
Games utilizing the Kinect sensor often include a "virtual player" (also referred to as an "avatar") whose movements are meant to partially correspond to movements of the player as determined by the sensor. (D.I. 333 at 24; D.I. 336, ex. 4 at 229-30) In some games, the virtual player's movements correspond on a "close[] to 1:1" basis with those of the user. (D.I. 361 at 35; D.I. 336, ex. 3 at ¶¶ 231-33) These movements are sometimes shown within a "virtual environment" in the game, which remains constant irrespective of the physical space in which the Kinect or the user is in. (D.I. 333 at 6-7; D.I. 334, ex. B at ¶¶ 102-07) One accused product, for example, is a "mini-game" called "River Rush" that places the player in a virtual environment involving a "twisting and turning river through which a raft (with the player inside) travels." (D.I. 333 at 7; see also D.I. 334, ex. B at ¶ 107)
The Court held a Markman hearing on November 20, 2012, and issued its Report and Recommendation regarding claim construction on May 13, 2013. (D.I. 300) The District Court adopted the Court's Report and Recommendation on claim construction with clarifications on September 19, 2013. (D.I. 314) The instant summary judgment motions ("Motions") are fully briefed. The Court held oral argument regarding those Motions, as well as the parties' respective Daubert motions, (D.I. 326, 337), on October 28, 2014. Fact and expert discovery are now complete, (D.I. 315, 333 at 1), and the matter is currently scheduled for trial on November 9, 2015, (D.I. 399).
A grant of summary judgment is appropriate where "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). If the moving party meets this burden, the nonmovant must then "come forward with specific facts showing that there is a genuine issue for trial." Id. at 587 (emphasis in original) (internal quotation marks omitted). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). During this process, the Court will "draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
However, in order to defeat a motion for summary judgment, the nonmoving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (party opposing summary judgment "must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue") (internal quotation marks and citation omitted). The "mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis in original). Facts that could alter the outcome are "material," and a factual dispute is genuine only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248. "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted). A party asserting that a fact cannot be—or, alternatively, is—genuinely disputed must support the assertion either by citing to "particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials"; or by "showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(A) & (B).
The standard for patent infringement is set forth in 35 U.S.C. § 271, which states that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." An infringement analysis is performed on a claim-by-claim basis. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). In order to prove infringement, "the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents." Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013).
To literally infringe the claim, an accused device must embody each limitation of the claim; the absence of any limitation defeats literal infringement. Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1297 (Fed. Cir. 2005). To prove infringement under the doctrine of equivalents, "a patentee must provide particularized testimony and linking argument with respect to the `function, way, result' test." Cephalon, 707 F.3d at 1340 (noting that the essential inquiry in any such determination is whether "the accused product or process contain[s] elements identical to or equivalent to each claimed element of the patented invention") (internal quotation marks and citation omitted). The function-way-result test "asks whether an element of an accused product performs substantially the same function in substantially the same way to obtain the same result as an element of the patented invention." Id. (internal quotation marks and citation omitted).
The first basis for relief raised in Defendants' Motion for Summary Judgment of Noninfringement is that the accused products do not include a "defined physical space" as required by all but one of the asserted claims.
At the time that the claim construction decision was issued, the Court was of the view that it had resolved the dispute between the parties as to this term. More specifically, during the Markman hearing, the parties argued over whether the "defined physical space" could be defined in relation to the sensor viewing area, or must instead be an actual physical space known in advance of the adaptation of a testing and training system. (D.I. 299 at 113-15, 122-23) The Court resolved that dispute by finding that the defined physical space must be defined independently from the sensor viewing area. (D.I. 300 at 16-19)
Plaintiff now accuses a defined physical space represented by "hardcoded values" within each accused video game. (D.I. 361 at 4) These hardcoded values are numbers that are "burned onto each game disc at the time it is manufactured[,]" and "define boundaries of a physical space within which the player plays the game." (Id.) The values are set using a coordinate system relative to the Kinect sensor—the same coordinate system through which player movements are tracked. (Id. (citing D.I. 364, ex. 17 at 180, 182-83 & 188)) These accused hardcoded values do not meet the Court's claim construction, for several reasons.
First, as noted by Defendants, those hardcoded values are "just numbers . . . contained in the source code for the Accused Games, and . . . burned onto the game discs." (D.I. 386 at 3) As a result, Plaintiff's alleged "defined physical space" is not an actual physical space at all—that is, it is not a physical area with dimensions that can be measured such that the claimed system can be adapted to it. (See D.I. 333 at 12 n.8 (Defendants' noting that a person cannot "take out a tape measure and actually measure a defined physical space that is only defined with respect to the position of a moveable object and that cannot be seen") (internal quotation marks and citations omitted)) Instead, it is a list of abstract dimensions, defined only in relation to the position and direction of the Kinect sensor. (D.I. 361 at 4-5; D.I. 401 at 21) As the Court concluded during claim construction, the specification of the patents makes clear that the "defined physical space" envisioned by the patentee is independent from the placement of the sensor, and as such it is fundamentally different from these hardcoded values. (D.I. 300 at 17-19) The patent specification provides a representative example of a defined physical space where the "optical sensors . . . [are] mounted about 30 inches apart on a support mast centered laterally with respect to the defined physical space 12 at a distance sufficiently outside the front boundary 40 to allow the sensors
Second (and relatedly), Plaintiff's alleged defined physical space is not an "indoor or outdoor space" as required by the Court's claim construction. (D.I. 300 at 19; see D.I. 333 at 11-12) Plaintiff asserts that because the alleged space is defined relative to the Kinect, and since the Kinect must always be located in either an indoor or outdoor space, the limitation can be met. (D.I. 361 at 13) This argument misses the mark. The alleged space is purely abstract, and exists only as a mathematical construct in relation to the location and direction of the sensor—it cannot be characterized as any particular physical space that exists indoors or outdoors. It is thus not an "indoor or outdoor space" as required by the claims and the Court's construction.
Third, the accused hardcoded values cannot meet the defined physical space claim limitation because, to the extent that those values can be said to represent an actual, physical space, that space cannot be `known and defined prior to the adaptation of the system to a particular space' as required by the Court's claim construction.
Thus, the accused hardcoded values are not a physical "space," nor arc they an "indoor or outdoor space[,]" and to the extent that they could be said to represent a space at all, that space could not be "known prior to the adaptation of the testing and training system" as required by the Court's claim construction. Plaintiff has thus failed to prove literal infringement as a matter of law.
Plaintiff asserts that even if the Court concludes that the accused products cannot literally infringe because they use a defined physical space that is set relative to a sensor, the accused products still infringe under the doctrine of equivalents.
Plaintiff provides only the skeletal framework of its doctrine of equivalents argument—an argument set out in merely a single short paragraph of its answering brief (D.I. 361 at 17-18)
The paragraph cites to the report of its expert, Dr. Earl Sacerdoti, in which Dr. Sacerdoti concludes that "[a] defined physical space that is defined in reference to a sensor position (such as the spaces I have identified in the Accused Video Games) performs the same function, in a substantially similar way, to achieve the same result as a physical space that is defined without relation to the sensor position." (Id.; D.I. 336, ex. 5 at ¶ 11)
Even if Plaintiff had offered expert testimony on this point, summary judgment would still be warranted under the present circumstances in light of the doctrine of vitiation. The United States Court of Appeals for the Federal Circuit has held that "`[v]itiation'" is "a legal determination that the evidence is such that no reasonable jury could determine two elements to be equivalent." Brilliant Instruments, Inc. v. Guide Tech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013) (quoting Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1347 (Fed. Cir. 2012)) (internal quotation marks omitted). "`If no reasonable jury could find equivalence, then the court must grant summary judgment of no infringement under the doctrine of equivalents:" Id. (quoting Deere, 703 F.3d at 1356).
The concept of vitiation "has its clearest application `where the accused device contain[s] the antithesis of the claimed structure[,]'" because "two elements likely are not insubstantially different when they are polar opposites." Id. (quoting Planet Bingo, LLC v. GameTech Int'l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006)). "[V]itiation applies when one of skill in the art would understand that the literal and substitute limitations are not interchangeable, not insubstantially different, and when they do not perform substantially the same function in substantially the same way, to accomplish substantially the same result." Id.
Here, no reasonable jury could find that an abstract space is "interchangeable" with an actual, physical space, or that the differences between the two are "insubstantial." The relative, abstract space accused by Plaintiff performs a substantially different function than a defined physical space. The function of the defined physical space in the claim is to provide a known area for the player to move, such that the player's movements may be tracked by a tracking system. ('565 patent, col. 5:19-26; D.I. 300 at 17-19). Such a tracking system may be adapted to the defined physical space; in other words, the defined physical space of the claims is known before adaption of the sensor. ('565 patent, col. 9:8-34; D.I. 300 at 18-19). The abstract, hardcoded coordinates accused by Plaintiff cannot serve this function because they do not represent any real-world physical space. A tracking system cannot be adapted to the hardcoded values; instead, the location of the hypothetical space that those hardcoded values represents depends on the location of the accused tracking system itself. As such, the particular space that will serve as the alleged defined physical space in the accused products cannot be known until after the system is adapted. See Planet Bingo, LLC v. GameTech Intl, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006) (affirming summary judgment of no infringement under the doctrine of equivalents where "the proposed application of the doctrine of equivalents would change `before' to 'after[]") (emphasis added). This "is not a subtle difference in degree, but rather, a clear, substantial difference or difference in kind." Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1361-62 (Fed. Cir. 2005) (internal quotation marks and citations omitted); see Applied Med. Res. Corp. v. Tyco Healthcare Grp. LP, 534 F. App'x 972, 979 (Fed. Cir. 2013) (stating that vitiation can occur "when the aspect of the accused device that allegedly meets that limitation represents a difference in kind from what is claimed in the limitation."). For the foregoing reasons,
The Court therefore recommends that the District Court hold that no reasonable jury could find that the Plaintiff's accused abstract space is equivalent to the defined physical space set forth in the claims.'
Defendants move for summary judgment of invalidity on three separate grounds. After setting out the applicable legal standards, the Court will address each of Defendants' arguments in turn.
A patent granted by the United States patent and Trademark Office (the "PTO") is presumed to be valid. 35 U.S.C. § 282(a); Microsoft Corp. v. i4i Ltd. P'ship, 131 S.Ct. 2238, 2245-46 (2011). The rationale underlying this presumption of validity is that "the PTO, in its expertise, has approved the claim[.]" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007). The burden of proving invalidity rests with the patent challenger at all times, who must establish a patent's invalidity by clear and convincing evidence in order to prevail. Microsoft Corp., 131 S. Ct. at 2245-49. Clear and convincing evidence places within the mind of the fact finder "`an abiding conviction that the truth of [the] factual contentions are highly probable.'" Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).
A claim is anticipated under 35 U.S.C. § 102(a) or (b) if:
35 U.S.C. § 102.
An invention cannot be patented "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a);
In determining what would have been obvious to one of ordinary skill in the art, the use of hindsight is not permitted. See KSR, 550 U.S. at 421 (cautioning the trier of fact against "the distortion caused by hindsight bias" and "arguments reliant upon ex post reasoning" in assessing obviousness); see also Pfizer Inc. v. Teva Pharm. U.S.A., Inc., 882 F.Supp.2d 643, 664 (D. Del. 2012). Put another way, the task of determining whether a patent is invalid requires a court to "step back in time to before the moment of actual invention, and out of the actual inventor's shoes into those of a hypothetical, ordinary skilled person who has never seen the invention." Eisai Co., Ltd. v. Teva Pharms. USA, Inc., No. 03 Civ. 9223(GEL), 2006 WL 2872615, at *2 (S.D.N.Y. Oct. 6, 2006) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)).
The Court should also, as part of its analysis of all of the evidence on the question of obviousness, consider evidence regarding objective considerations of nonobviousness (also referred to as "secondary considerations of nonobviousness"). In re Cyclobenzaprine Hydrochloride Extended-release Capsule Patent Litig., 676 F.3d 1063, 1075-76 (Fed. Cir. 2012). An analysis of objective considerations of nonobviousness may not be deferred until after the fact finder makes an obviousness finding, nor should a fact finder shift the burden of proof at any point to the patentee (including when considering evidence of objective considerations). Id. at 1075-79. Instead, at all times, the party challenging the patent bears that burden, and must prove by clear and convincing evidence that the claim at issue of the patent is invalid. Id.
Obviousness is a question of law that is predicated on several factual inquiries, as set forth in Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). Specifically, the finder of fact must assess the following considerations, referred to as the Graham factors: (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) the aforementioned objective considerations of nonobviousness, such as commercial success, long-felt but unmet needs, the failure of others, etc. Graham, 383 U.S. at 17-18; see also Daiichi Sankyo Co. v. Matrix Labs., Ltd., 619 F.3d 1346, 1352 (Fed. Cir. 2010).
With regard to the '121 patent, Defendants assert anticipation of independent claim 22 by U.S. Patent No. 5,423,554 to Davis ("Davis"). (D.I. 336, ex. 25 ("Davis"); D.I. 331 at 5) Claim 22 of the '121 patent reads as follows:
('121 patent at col. 47:23-48:9 (second, third, and fourth emphasis added))
As for Davis, it discloses a "virtual reality" basketball game where a player is tasked with "put[ting] a virtual basketball into a virtual basketball hoop before his/her virtual opponent steals the ball." (Davis at Abstract) The user stands in front of a "backlit Chromakey background," and a camera records the user's image, while a computer separates the image of the user from that of the background. (Davis at Abstract & col. 7:10-52) The user's image is then overlaid onto a new, digital background (i.e., a basketball court), as shown in Figure 1 (in which the person on the left, identified as "14[,]" is the representation of the user):
(Davis, col. 7:10-52; D.I. 331 at 6-7) This image is displayed to the user on an array of nine monitors. (Davis, col. 6:26-38)
The user wears a "distinctly colored glove" so that the system can detect the position of his or her hand. (Id. at Abstract & col. 3:55-4:40) The system searches for the glove against the background based on the glove's color, and "[w]hen the glove is located, its centroid is determined in order to assign consistently to the glove a single (x, y) value." (Id. at Abstract & col. 3:55-4:40) Based on the movement and position of the glove, the player can interact with a virtual basketball in order to play the game:
(Davis, col. 3:34-54) The system can also determine the height of the player in order to scale the size of the virtual opponent in proportion to that of the player, and can acquire the "width and the outline of the player" in order to determine "when the player bumps into objects or the side frame of the background." (Id., col. 4:41-47; see also id., col. 16:21-41)
The parties do not dispute that Davis pre-dates the earliest priority date of the '121 patent. (D.I. 331 at 5; D.I. 355 at 6) Indeed, tile Davis reference was addressed by the Examiner during prosecution of the '565 patent, the parent of the application that became the `121 patent.
The parties' dispute with regard to the Davis reference centers on the claim term "representation," along with certain subsidiary terms that the parties agree are incorporated into the Court's definition of "representation." (See, e.g., D.I. 355 at 7-9) The Court has construed "representation" to mean a "portrayal, depiction, or rendering of the user with virtual coordinates in virtual space." (D.I. 300 at 39 (emphasis added) (internal quotation marks omitted)) The Court's construction of "representation" thus incorporates the meaning of the term "virtual space"—a term that the Court has, in turn, construed as a "computer-generated scaled representation of the physical space." (Id. at 24 (emphasis added) (internal quotation marks omitted)) The parties agree that the "physical space" referred to therein is the type of "defined physical space" previously discussed above: an "indoor or outdoor space having size and/or boundaries known prior to the adaptation of the testing and training system." (Id. at 19 (internal quotation marks omitted); see D.I. 355 at 7-8; D.I. 333 at 8 n.5). And so, taking all of this together, the parties agree that the term "representation" in claim 22 of the '121 patent requires the existence of a virtual object that exists within coordinates in a virtual space, wherein that virtual space is itself a computer-generated scaled representation of a defined physical space. (See D.I. 355 at 7-8; D.I. 333 at 8 n.5)
The parties spend much of their briefing regarding Davis addressing a dispute about whether a "representation" must have three-dimensional virtual coordinates, or whether the claim can encompasses a system, like Davis, that superimposes a two-dimensional video image of the player on top of a two-dimensional virtual play area.
It is on this latter basis that the Court agrees that summary judgment is not well taken, as Defendants have not explained how Davis discloses a "defined physical space." Dr. Christoph Bregler, Defendant's expert, does not address in his report what the defined physical space in Davis is alleged to be. (D.I. 334, ex. A, at X-2 to X-4) As a result, it is simply unclear what the Defendants intend to rely upon, if anything, to show how Davis discloses a defined physical space (and therefore meets the "representation" element of the claim).
Indeed, it is unclear to the Court whether Davis does disclose a defined physical space. Based on the descriptions of Davis provided by Defendants, it appears that the physical space in which the player's movements are monitored may be defined solely as the area that can be photographed by the camera used in association with the chroma key system. (Id. at X-2 to X-4; Davis at 7:10-52) Yet the Court has already concluded that the defined physical space of the patents may not be defined by the viewing area or position of the sensor (i.e., the camera). (D.I. 300 at 19) Without further explanation from Defendants, it is not clear to the Court that Davis includes any defined physical space that is not defined solely relative to the camera. At the very least, this presents an issue of fact sufficient to preclude summary judgment.
Because Defendants have not shown that Davis meets all of the elements of claim 22 of the '121 patent, the Court will recommend that the District Court deny Defendants' motion for summary judgment of anticipation by Davis.
Defendants assert that claim 11 of the '997 patent is invalid as obvious in light of a combination of the following five references:
(D.I. 331 at 11-12; see D.I. 385 at 5 (clarifying that Defendants are asserting each of the four Mandala references as part of a five-reference combination, along with the Step N Motion reference, rather than as one prior art system)) Plaintiff does not dispute that any of these references qualify as prior art to the '997 patent. (D.I. 355 at 10-14)
Claim 11 of the '997 patent depends on claim 5. Together, the claims read as follows:
(`997 patent, col. 45:1-7, 31-33)
The Mandala references are a series of references that describe a system, called the Mandala system, that is used to provide "interactive computer-generated simulations" of various sports. (Warme at 45) As described in Warme, "[t]he Mandala [s]ystem uses a video camera interface to allow players to interact directly with a virtual world. The players see their own image superimposed over digital backgrounds, and they can interact without having to wear, touch, or hold any hardware." (Warme at 45; see also D.I. 363, ex. 10, at 37-40). The system was created by "the Vivid Group," who "developed a series of modules [for the system] designed to provide a portable `arena' for game players. These modules may be configured to offer any single sport or give the user a choice of several sports." (Warme at 45) Players using the system were "unencumbered[,]" in the sense that the system used only a camera to capture the user's position; however, certain simulations on the device involved the use of additional hardware, such as a tennis racquet or a golf club. (Id. at 45, 49) The system could also be used for exercise: "Users can follow and control a preprogrammed aerobics workout . . . or follow along with an onscreen trainer and receive feedback about body positioning. . . . Exercise within a Mandala System can be tailored exactly to a user's desires to enhance interest in the experience." (Id.)
The other reference at issue is the Step N Motion reference. Step N Motion is a 1990 exercise video consisting of an exercise routine that "depicts aerobic exercise, where a trainer elicits movement from the exercisers, followed by resistive training, where the exercisers supplement their exercise using weights." (D.I. 334, ex. A at Appendix W at W-7 (citing Step-N-Motion at 37:55-43:15 & 44:30-47:50)).
As previously noted, in order to invalidate claim 11 of the '997 patent as obvious, Defendants must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so. To that end, the parties essentially agree that the combination of the Mandala references and Step N Motion meets all of the elements of claim 11.
Taking up that question, the Court first finds there to be no meaningful dispute that a person of skill in the art
Plaintiff calls the combination of the Mandala references "an improper shortcut" because "each of the documents relied upon by Defendants is a separate piece of prior art that refers to different versions in time of Mandala." (D.I. 355 at 10) Yet Plaintiff does not back up this one-line argument with any specifics. It makes no further articulation in its briefing as to how the "versions" of the Mandala system described in these four references meaningfully differ. Nor does it point out any problems or unexpected results that would result from combining the references. And Plaintiff does not cite to any portion of Dr. Grindon's report in which Dr. Grindon challenges the propriety of combining the Mandala references.
The Court also concludes that Defendants have demonstrated, as a matter of law, that a person of skill in the art would be motivated to combine the Mandala references with an exercise routine like that disclosed in Step N Motion.
To that end, the record demonstrates that the Mandala references (and Warme in particular) disclose systems that use video cameras to superimpose the user's image over computer-generated graphics, and that allow the user to interact with objects or cues within that environment in order take part in virtual sports (such as basketball, hockey, or soccer) or aerobic exercise routines. (Warme at 45-49; see also D.I. 334, ex. A, at ¶¶ 53, 145-48) With regard to exercise routines in particular, Warme discusses how "[u]sers can follow and control a preprogrammed aerobics workout . . . or follow along with an onscreen trainer and receive feedback about body positioning." (Warme at 49) "The technology allows you to have the freedom of movement to achieve a real workout, and provides interesting content to engross and amuse." (Id.) It is also clear that the Mandala systems were intended to be customized by the developer to allow the users to participate not only in different games of sport but also in different workout routines.
The record also demonstrates that the Step N Motion reference represents an alternative workout routine that could be used with the Mandala System—one resulting in a system where a "resistive training device" and a "reactive training device" are "used in a training sequence" as required by the claims. (`997 patent, col. 45:5-7) As set forth by Defendants in their opening brief, "the combination of the Mandala References and Step N Motion is nothing more than a simple substitution of Step N Motion's exercise routine for the aerobic routine described in the Mandala References." (D.I. 331 at 14) The result of such a combination is entirely predictable—an implementation of the Mandala references where the user uses weights for part of the aerobic training sequence.
Plaintiff makes two primary arguments as to why the Mandala references should not be combined with Step N Motion. For the reasons set out below, the Court does not find those arguments to be well taken.
Plaintiff first counters that Step N Motion is not "analogous art"—and thus may not properly be considered for a combination under Section 103. (D.I. 355 at 10-11) The Federal Circuit has held that "`[t]wo separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.'" Innovention Toys, 637 F.3d at 1321 (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). While this is a question of fact, see In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992), the Federal Circuit has dealt with it in the summary judgment context where "no reasonable jury could find that the . . . references do not qualify as analogous prior art." Innovention Toys, 637 F.3d at 1323 (reversing, on these grounds, a lower court's determination at the summary judgment stage that a prior art reference was not analogous art); Old Town Canoe Co. v. Glenwa, Inc., 55 F. App'x 918, 926 (Fed. Cir. 2003) (vacating a grant of summary judgment that the patent was not invalid as obvious, based in part on a determination that the prior art was analogous); see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (reversing denial of judgment as a matter of law following a jury verdict of nonobviousness, in part because the prior art was "not merely analogous art, it [wa]s the same art.").
No reasonable jury could find that the Step N Motion reference is not "from the same field of endeavor" as the '997 patent under the first prong of the test set forth in Innovention Toys. The proper inquiry here is whether the prior art reference is analogous "to the claimed invention"—i.e., whether Step N Motion is analogous to the claims of the '997 patent. Innovention Toys, 637 F.3d at 1321.
Even if the first prong of the "analogous art" test were not satisfied, Step N Motion is plainly "reasonably pertinent to the particular problem with which the inventor is involved[,]" under the second prong of the test. That is, the video addresses exactly the kind of aerobic workout that the patent discloses. ('997 patent, col. 15:32-34, 44-46) One of the goals of the '997 patent is to provide an improved method of performing an exercise routine, and there can be no question that a person of skill in the art would look to prior art exercise routines in addressing that problem. Plaintiff's primary argument to the contrary is that a person of skill in the art would not look to a "VHS exercise tape for ideas on how to modify the chroma key systems described in the Mandala references." (D.I. 355 at 11 (emphasis added)) But the relevant portion of Step N Motion is the exercise routine that it discloses, not the fact that this routine is found on a VHS tape. Plaintiff does not explain why the medium on which the exercise routine in question was contained would stand as a barrier to that otherwise pertinent reference being considered by a person of skill in the art. See KSR, 550 U.S. at 421 ("A person of ordinary skill is . . . not an automaton."); Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (stating that the hypothetical person of skill in the art "is presumed to be aware of all the pertinent prior art").
For these reasons, no reasonable jury could conclude that the prior art is not analogous.
Plaintiff's second argument against a motivation to combine is that the Step N Motion video "teach[es] away" from a combination with the Mandala references, because the beginning of the video includes a warning that "[t]his workout is designed for use with `The Step' and the use of any other apparatus is at the viewer['s] own risk":
(D.I. 355 at 12-13; Step N Motion at 1:06) This argument also fails. Plaintiff contends that "[u]pon viewing this warning, a person of ordinary skill in the art would be led away from combining the exercise routines of Step N Motion with any of the systems in the Mandala references." (D.I. 355 at 12) Yet the disclaimer in question is, if anything, an acknowledgment that Step N Motion will in fact be used with other apparatuses. The warning does not teach away from such use;
Even if this warning could be said in some way to teach away from a combination with another reference, its import could not have anything to do with teaching away from the use of handheld weights with an aerobic exercise routine (like that disclosed in the Mandala references). The reason that Defendants seek to use this reference is that it discloses the use of handheld weights as part of an aerobic exercise sequence. A reasonable juror could not conclude that the disclaimer discourages such a use of weights, because in the video the instructor actually uses weights as a part of the exercise routine.
For these reasons, the Court concludes that no reasonable jury could find that Step N Motion teaches away from a combination with the Mandala references.
Finally, Plaintiff argues that certain objective considerations of nonobviousness are set out in the record, and contribute to its argument that the motion should be denied. (D.I. 355 at 13-14) Objective considerations of nonobviousness make up the final part of the obviousness test under Graham, and the Federal Circuit has emphasized that such objective considerations are an essential component of the obviousness analysis. Graham, 383 U.S. at 17-18; see, e.g., Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) ("Objective indicia of nonobviousness play a critical role in the obviousness analysis. They are `not just a cumulative or confirmatory part of the obviousness calculus but constitute[] independent evidence of nonobviousness.'") (quoting Ortho—McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008)). These considerations "are crucial in avoiding the trap of hindsight[,]" Leo Pharm. Products, 726 F.3d at 1358, and "may be the most probative and cogent evidence in the record[,]" Apple Inc. v. Int'l Trade Comm'n, 725 F.3d 1356, 1366 (Fed. Cir. 2013) (internal quotation marks and citations omitted).
In support of its arguments regarding objective considerations, Plaintiff focuses on the concept of commercial success. It argues that its "Trazer Product," which Plaintiff alleges embodies the claims, was "well known and successful" in "the relevant . . . professional and institutional market[.]" (D.I. 355 at 13) Plaintiff cites to expert testimony from Dr. Grindon to that effect—testimony indicating that the relevant "professional and institutional market . . . . includes physical therapy applications, medical applications, fitness clubs, and training for athletic teams." (Id.; D.I. 362, ex. 1 at ¶ 235) According to Dr. Grindon, the product "faces no significant competition" within its market. (D.I. 362, ex. 1 at ¶ 235) Dr. Grindon also notes that the product "has been adopted by two of the top teams in NCAA football[,]" "the Alabama Crimson Tide and the Ohio State Buckeyes[.]" (Id. at ¶ 236) Dr. Grindon found it noteworthy that "Alabama Head Coach Nick Saban specifically wanted to use the Trazer system as a recruiting tool for prospects visiting Alabama's facilities, and expedited the purchasing process for the Trazer system so that it could be displayed to potential recruits during the current recruiting season." (Id.)
Defendants contest these allegations of commercial success only by pointing to contrary deposition testimony, primarily that of Plaintiff's principal Barry J. French. (D.I. 385 at 7-8) Mr. French stated in a deposition that Plaintiff's business partner, Cybex International ("Cybex"), "had not been successful" in selling the Trazer product, that Plaintiff at times did not make a profit on selling Trazer, and that a business dispute arose in relation to Plaintiff's agreement with Cybex to sell the Trazer product. (Id. at 7-8; D.I. 387, ex. 40 at 805-06)
Plaintiff also relies upon the fact that the '997 patent was licensed to Cybex along with other technology. Evidence of license to others may serve as evidence of commercial success if a nexus can be shown between the license and the merits of the claimed invention. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). Plaintiff's primary evidence of a nexus with regard to this license is that "Cybex's corporate witness testified that the value of the license agreement from Cybex's perspective was the value of the patents." (D.I. 355 at 13 (citing D.I. 364, ex. 14 at 211-13)) Defendants contend that the Cybex license was "much broader than just the patents-in-suit," and included other intellectual property, a functioning product, and access to certain personnel. (D.I. 385 at 8) But Defendants do not dispute the fact that the relevant claims of the '997 patent were licensed. The relevant questions are (1) what portion of the value of the license could be attributed to those claims, and (2) whether the license was a result of the merits of the invention. As to those points, there remains a question of fact regarding commercial success.
In the end, the evidence put forward by Plaintiff as to nonobviousness is certainly not overwhelming or anything close to it. But, on the other hand, the Court cannot say that it is so wanting that after considering it, no "reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248. In light of that, the obviousness of claim 11 is a question that, in the Court's view, will need to be resolved by a jury.
Defendants also assert that U.S. Patent No. 5,659,691 to Durward et al. anticipates claims 1 and 5 of the '565 patent. (D.I. 331 at 15; see D.I. 336, ex. 35 ("Durward")) Claims 1, 4, and 5 read as follows:
('565 patent, col. 38:62-39:7, 39:28-33)
Defendants set forth in their opening brief how they believe each claim element is anticipated by Durward.
Plaintiff asserts, inter alia, that Durward does not disclose a "defined physical space[.]" (D.I. 355 at 17-18) Defendants implicitly concede that Durward itself does not disclose the limitation, but in order to account for it, they cite to a portion of a sentence in U.S. Patent No. 4,984,179 (the "'179 patent") (one of the nine other patents purportedly incorporated by reference in Durward). (D.I. 331 at 18-19; D.I. 385 at 11; see D.I. 336, ex. 36 ("179 patent")) Defendants largely focus on column 2, lines 51-53 of the '179 patent, which states that "[p]referably the said spatial coordinates are at least partly coincident with a known real 3-dimensional space in which said user is located . . . ." (D.I. 331 at 18-19) The "said spacial coordinates" are the coordinates of "a virtual model" with which the user interacts. ('179 patent, col. 2:40-47)
There are multiple problems with Defendants' argument. First, Defendants do not explain how the disclosure of the '179 patent fits into the system disclosed in Durward. Even assuming it is proper to treat the '179 patent and Durward as a single reference, it is not enough to show that all of the elements of the claims are present in that reference; Defendants must show that the elements are "arranged or combined in the same way as recited in the claims[.]" Net MoneylN, Inc., 545 F.3d at 1370. Defendants have failed to do so in this case. Durward describes a system that tracks users "relative to [a] computer . . . or some other reference point[.]" (Durward, col. 3:22-26) The '179 patent discloses a different system, which includes a "known real 3-dimensional space." ('179 patent, col. 2:51-53) Defendants do not explain how what is disclosed in the '179 patent would relate to, or be incorporated into, the system disclosed in Durward itself, such that Durward could be interpreted to disclose a single system that includes all of the elements of the claim at issue, arranged as recited in the claim.
Further, it is not even clear that the key sentence of the '179 patent discloses a "defined physical space" as that term has been construed. The sentence does not describe exactly what constitutes a "known real 3-dimensional space," including whether the precise boundaries or size of that space are known, or whether the space is known prior to the adaptation of the system (as opposed to being defined, for example, by a sensor sweep—which would be excluded by the Court's claim construction). Likewise, although the sentence refers to "spacial coordinates[,]" those are the coordinates of a "a virtual model" with which the user interacts, rather than the location of the player. ('179 patent, col. 2:40-47) Indeed, in other portions of its specification, the '179 patent suggests that the size and/or boundaries of any physical space in which the user happens to be are irrelevant to the system described in the patent. (Id., col. 3:48-52 ("The area within which the user can `move' is not limited and physical movement is unnecessary so that the user can, e.g., remain seated in a chair while viewing a computer generated virtual model from all possible angles and from any distance around, above, or below it.") (emphasis added); id, col. 5:61-63 (noting that "[i]t will be appreciated that the physical area designated 10 in FIG. 1 has no subjective significance for the helmet wearer" and that "there are no `physical' limits to variation of that [virtual] environment")). Defendants have not cited to a disclosure in Durward or the '179 patent of a single system where the physical location of the user is tracked in a "defined physical space" as required by the claims.
Because Defendants have not shown that the "defined physical space" element is met by Durward, the Court recommends that Defendant's motion for summary judgment of invalidity be denied as to claims 1 and 5 of the '565 patent.
For the reasons set forth above, the Court recommends that Defendants' Motion for Summary Judgment of Noninfringement be GRANTED, and that Defendants' Motion for Summary Judgment of Invalidity be DENIED.
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). 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 Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1 (3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
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.
Because this Report and Recommendation may contain confidential information, it has been released under seal, pending review by the parties to allow them to submit a single, jointly proposed, redacted version (if necessary) of the Report and Recommendation. Any such redacted version shall be submitted no later than April 8, 2015 for review by the Court, along with a clear, factually detailed explanation as to why disclosure of any proposed redacted material would "work a clearly defined and serious injury to the party seeking closure." Pansy v. Borough of Stroudsburg, 23 F.3d 772, 786 (3d Cir. 1994) (internal quotation marks and citation omitted). The Court will subsequently issue a publicly-available version of its Report and Recommendation.
(D.I. 362, ex. 1 at ¶¶ 57-58 (quoting D.I. 336, ex. 3 at ¶ 61)) Defendants' expert, Dr. Bregler, defined the level of skill in the art slightly differently, concluding that a person of ordinary skill in the art of the '997 patent "would have a bachelor's degree in computer science or electrical engineering and two years of practical experience, or alternatively, at least two years of experience in the field of movement quantification and motion tracking or capture or the equivalent." (D.I. 334, ex. A, at ¶ 33) The Court's conclusions would not change if it were to adopt the level of skill set forth in Dr. Bregler's report. (See D.I. 355 at 11-12 (Plaintiff describing Dr. Bregler's proposed level of skill in the art for the '997 patent, and arguing that even in view of it, summary judgment should be denied))
Plaintiff has cited no authority for the proposition that a comparison of the prior art references to each other, rather than to the asserted patent, is proper. In contrast, the cases cited by Plaintiff express the question as whether the prior art reference is analogous to the asserted patent. See TASER Intl, Inc. v. Karbon Arms, LLC, No. CV 11-426-RGA, 2013 WL 6705149, at *8 (D. Del. Dec. 19, 2013) (comparing the prior art to the asserted patents); see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (same).
Plaintiff has failed to show such a nexus. Plaintiff points to a long felt need for "an interactive video game system" that would help encourage "children" to exercise, but that need is also met by the systems disclosed in the prior art Mandala references. (See, e.g., Warme, at 48-49 (describing that the system can be used for exercise, and describing the reaction to an interactive hockey simulation within the system, which "[h]undreds of satisfied players agreed ... was a challenge worthy of any hockey fan regardless of age[.]" (emphasis added))); see also Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013) (holding that the patentee had failed to show a nexus with regard to a long-felt need and industry praise where "these factors equally apply to the prior art . . . device"); In re Huai-Hung Kao, 639 F.3d 1057, 1074 (Fed. Cir. 2011) ("Because here [the patentee] has not provided any evidence of secondary considerations with a nexus to the novel components of [the asserted claim], the secondary considerations do not compel a holding of nonobviousness."). Moreover, Plaintiff provides no expert testimony on this point. As for Plaintiff's citation to "accolades from ESPN, Disney, the Today Show, and Oprah" as recognition that its system fulfilled this long-felt need, none of that recognition is described as relating to the use of a resistive training device. (See D.I. 362 ex. 1, at ¶¶ 242-50) Even Plaintiff's own expert, Dr. Grindon, attributes this praise to other features of the invention, namely "the real-time interactive nature of the system, and its ability to allow player motions in the physical space to control movements of the representation in the virtual space, along with its ability to provide indications of player performance." (Id. at 250) These are all features that are either: (1) not relevant to claims 5 and 11, or (2) are met by the prior art systems disclosed in the Mandala references. (See, e.g., Warme at 49) Thus, Plaintiffs evidence regarding an alleged long-felt need would not be sufficient, on its own, to create a genuine issue of material fact as to non-obviousness.
