Tomita V Nintendo

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

------- x
TOMITA TECHNOLOGIES USA, LLC; TOMITA
TECHNOLOGIES INTERNATIONAL, INC.
11 Civ. 4256 (JSR)
Plaintiffs,
MEMORANDUM
-v-
NINTENDO CO., LTD.; NINTENDO OF
AMERICA INC.,
I
I
Defendants. . " ..............,
I
:
" ,
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!
JED S. RAKOFF, U.S.D.J.
Tomita Technologies USA, LLC and Tomita Technologies
International (collectively, "Tomita"), the owners of the
intellectual property rights of inventor Seijiro Tomita, sue
Nintendo Co., Ltd. and Nintendo of Inc. (collectively,
"Nintendo") for patent infringement, claiming that the Nintendo
3DS infringes U.S. Patent No. 7,417,664 (the "'664 patent"). On
21, 2012, Nintendo filed two motions for summary
judgment. In the first, it argued that Tomita could not prove
Nintendo had infringed the '664 patent. In the second,
Nintendo argued that Tomita could not prove that Nintendo had
infringed the '664 patent. On April 20, 2012, the Court
issued a "bottom line" order denying both motions.
Memorandum explains the reasons for the Court's decision. The
Memorandum assumes familiarity with the Court's prior Memorandum
Case 1:11-cv-04256-JSR Document 82 Filed 06/26/12 Page 1 of 28
dated February 21, 2012, which construed claim terms in the '664
patent and set forth pertinent background information.
The Court turns first to Nintendo's motion for summary
judgment on Tomita's claim that Nintendo infringed the '664
patent. The '664 patent attempts "to provide a stereoscopic video
image pick-up and display system which is capable of providing
the stereoscopic video image having natural stereopsis even if
the video image producing and playback conditions are different."
Def.'s Rule 56.1 Statement in Support of Their Motion For Summary
Judgment of Non-Infringement ("Infringement 56.1 Statement")
~ 2.1 The Nintendo 3DS is a handheld video gaming system that can
capture and display stereoscopic photo and video images. Id. ~ 3.
The 3DS has a camera application and an Augmented-Reality Garnes
("AR Games") application. Id. ~ 7. Claim one is the only
independent claim of the '664 patent. Id. ~ 8. Tomita has accused
Nintendo of infringing claim one as well as dependent claims
seven, eight, ten, nineteen, twenty, and twenty-two. Id.
Claim one requires a "cross point measuring means for
measuring CP information on the cross-point (CP) of optical axes
of [the] pickup means. II Id. ~ 9. The Court has previously
construed this term as a means plus-function limitation under 35
U.S.C. 112 ~ 6, and found that the function is "to measure CP
1 Unless otherwise indicated, citations refer to the corresponding
paragraphs of both parties' Rule 56.1 statements.
2
information on the cross-point (CP) the optical axes of the
two video pick-up means. II Id. ~ 10. Nintendo contends that a
person of ordinary s 11 in the art 2003 would have construed
"optical axis" to mean "the straight line that coincides with the
axis of rotational symmetry of the lens" of the pickup means, but
Tomita notes that the Court has already rejected this
construction of the term. Memorandum dated February 21, 2012 at
13-15. The '664 patent indicates that patented system's
cameras will have optical axes that intersect. Infringement 56.1
Statement ~ 12.
The two outward fac cameras in 3DS generally point in
paral directions. Id. ~ 4.
2
Nintendo argues that, as a result,
their opt axes will not intersect. Nonetheless, Tomita has
produced evidence that suggests that the images captured by the
3DS's left- and right-eye cameras converge approximately ten
inches in front of the cameras. Decl. of Paul I. Margulies dated
February 21, 2012 ("Margul s Decl.") Ex. 2 ("Merritt Rep.")
~ 50. According to Tomita's expert, such convergence indicates
that the image sensors in the left- and right cameras are not
centered tly behind the cameras' respective lenses. Id.
2 Nonetheless, Tomita has produced evidence suggesting that cameras in
individual units may not conform to manufacturing specifications and
that the Nintendo 3DS uses a software program to correct deviations
from the manufacturing specifications. Decl. of Paul I. Margulies
dated February 21, 2012 ("Margulies Decl.
n
) Ex. 2 ("Merritt Rep.")
~ 48.
3
Tomita's expert also asserts that stereoscopic devices with
parallel cameras can shift camera chips behind the cameras'
s to generate a cross-point. Id. ~ ~ 31, 33.
Thus, Tomita's expert concludes that, in the parallel camera
arrangement, the cross-point is defined by the offset, or shift,
between the left- and right images, and that the 3DS measures
cross information bas on the positions of objects within
a captured scene. Id. ~ ~ 78, 80. For example, the 3DS's cameras
automatically focus on the closest object that occupies more than
twenty percent of the captured scene. Id. ~ 80. The 3DS changes
the offset between the images based on the distance between the
cameras and the object on which they focus. Id.
Claim one also requires an "offset presetting means for
offsetting and displaying . different video images based upon
. video image information, cross-point information and
information on the size of the image which is displayed by [the]
stereoscopic video image display device.
H
Infringement 56.1
Statement ~ 18 (emphasis added). The '664 patent states that the
system uses information on "the size of the screen on which the
images are actually displayed
H
for "presetting a offset [s
value to display the left-eye and right-eye video images.
H
Id.
~ 21. Resolution (in pixels) differs from physical display size.
Id. ~ 22. Nintendo asserts that the 3DS calculates the offset
value based on an image's resolution pixels. Tomita disputes
4
this assertion, however, and it has produced evidence that the
pixels on the 3DS's screen have a fixed size, allowing one to
convert information about pixels into information about an
image's size. Decl. of John O. Merritt dated March 6, 2012
("Merritt Decl.") ~ 6. Moreover, another of Tomita's experts has
opined that the 3DS's camera application mUltiplies the fset
value described above by a "scaling factor" in order to determine
the offset between left and right eye images. Margulies Decl.
Ex. 11 ~ 4. According to that expert, the scaling factor includes
information about the size of the image upon display. Id. Thus,
while Nintendo contends that the 3DS uses only information about
resolution in pixels, Tomita argues that the 3DS relies on
information about the physical size of images.
Finally, the system described by '664 patent includes a
"manual entry unit" through which the viewer can change "the
operation condition of the display control circuit." Infringement
56.1 Statement ~ 27. Both the 3DS's circle pad and the image
adjustment option on the 3DS's touch screen function in the
camera application, but do not function in the AR games
application. Id. ~ 28. In both the camera application and the AR
games application, the 3DS's 3D depth slider only changes the
display from a two-dimensional image ( the three
dimensional display "off") to a three-dimensional one (turning
the three-dimensional display "on"). Id. ~ 32.
5
Under Federal Rule of Civil Procedure 56(a), a party
requesting summary judgment must demonstrate that there is "no
genuine dispute as to any material fact
H
and that she is
"entitled to a judgment as a matter of law." Fed. R. Civ. P.
56(a) i see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 23
(1986). "[S]ummary judgment will not lie . if the evidence is
such that a reasonable jury could return a verdict for the
nonmoving party./I Anderson v. LibertY:L0bby, Inc., 477 U.S. 242,
248 (1986).
"To prove literal infringement, the patentee must show that
the accused device contains every limitation in the asserted
claims." Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1211
(Fed. Cir. 1998). Where the Court has construed a term to impose
a means-pIus-function limitation under 112 ~ 6, literal
infringement requires that "the relevant structure in the accused
device perform the identical function recited in the claim and be
identical or equivalent to the corresponding structure in the
specification./I
Weatherford Int'l, 389 F.3d 1370, 1378 (Fed. Cir. 2004) (quoting
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed.
Cir. 1999}). Equivalent structure must perform "the claimed
function in substantial the same way to achieve substantially
the same result as the corresponding structure described in the
specification./I Id. (quoting Odetics, 185 F.3d at 1267).
6
Even if a plaintiff cannot prove literal infringement
i.e.! that the accused device performs the identical function
recited in the claim -- she might still prevail under the
doctrine of equivalents if the accused product "performs
substantial the same function! in substantially the same way!
to achieve substantially the same result! as disclosed the
claim.1I Abbott Labs. v. Sandoz Inc., 566 F.3d 1282, 1296 (Fed.
Cir. 2009). "Summary judgment on the issue of infringement is
proper when no reasonable jury could find that every limitation
recited in a properly construed claim either is or is not found
in the accused device either 1 ly or under the doctrine of
equivalents.
1I
U.S. Philips Cq:t;p. v. Iwasaki Elec. Co., 505 F.3d
1371, 1374-75 (Fed. Cir. 2007) (quoting PC Connector Solutions
LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. . 2005))
Nintendo argues that the 3DS does not infringe the '664
patent three different reasons. First, Nintendo argues that
Tomita has produced no evidence that the 3DS "measure [es] CP
information on the cross-po (CP) of optical axes of said pick
up means.
1I
U.S. Patent No. 7,417,664 (filed Aug. 26,2008) ("'664
patent") at 21:55-57 (emphas added). This measuring function is
an express limitation on the coverage of claim one in the '664
patent. Thus, to sustain a claim for infringement, Tomita must
have produced evidence that would allow a reasonable jury to find
7
that the 3DS performs an ident or equivalent measuring
function.
In its Memorandum of February 21 construing the '664
patent's claims, the Court concluded that even cameras that
pointed in parallel directions, such as the 3DS's, could generate
optical axes that intersected at a cross point, therefore
rejecting Nintendo's argument to the contrary. Memorandum dated
February 21, 2012 at 10 15 & n.3. Nintendo now argues that,
notwithstanding the fact that the 3DS's cameras could, in the
abstract, have optical axes that intersect at a cross-point,
Tomita has not produced any evidence that they, in fact, do.
Specifically, Nintendo argues that Tomita's analysis of the 3DS's
camera application, rather than describing a "cross-point (CP) of
optical axes, redefines the cross-point as "the point in space
at which there is zero parallax between the left and right eye
images," which is determined by "an offset, or shift, between the
ft and right eye images." Merritt Rep. ~ 78.
3
Nintendo faults Tomita's analysis for two reasons. First,
Nintendo argues that Tomita has not even referred to the term
"optical " According to Nintendo, without specifically
3 Similarly, Tomita's experts asserts that, in the AR Garnes
application, "cross-point information is measured based upon the
distance between the 3DS and the AR Game card," Merritt Rep. ~ 83,
implying that the cross-point coincides with the location of the AR
Game card.
8
explaining how the 3DS incorporates optical axes into its
operation, Tomita cannot show that the 3DS "measure [es] CP
information on the cross-point (CP) of optical axes.
H
Second,
Nintendo argues that the" fset. between the left and right
eye images" is an aspect of the patented system's presentation of
stereoscopic images, rather than recording of such images.
Nintendo points out that, in fact, the patented tern "offset[s]
and display[s] . video images based upon cross-point
information." '664 patent at 21:61 63. Thus, Nintendo concludes
that Tomita's def tion of cross-point requires the 3DS to
perform the absurd and impossible task of determining the offset
between the ft and right-eye images "based upon
H
offset
between the left- and right eye images.
Nonetheless, a reasonable jury could find that the 3DS
"measure [es] CP information on the cross-point (CP) of optical
axes of said pick-up means.
H
The fact that the cross-point is
necessari the "cross-point (CP) of optical axes" does not mean
that the patented system must specifically measure information
about the optical axes or otherwise incorporate optical axes into
its operations. As the Court noted previously, the cross-point
and the two cameras form three vertices of a triangle, and the
patented system can perform an identical function by measuring
different aspects of that triangle, all of which constitute
cross-point information. Memorandum dated February 21, 2012 at
9
12. Indeed, claim eight of patent, which Tomita alleges the 3DS
infringes, covers a "system as defined in claim 1 in which said
cross-point measuring means calculates the cross-point based upon
the position of . an object in [the images picked up by the]
two pick-up means which are disposed in a parallel relationship."
'664 patent at 22:30-34; see also Memorandum dated February 21,
2012 at 20 (construing relevant claim terms).4
Tomita has produced evidence that would allow a reasonable
jury to find that the 3DS measures cross point information "based
on the position of an object in the images picked up" by the
3DS's two cameras. Tomita's expert asserts that cameras that
point in parallel directions can generate a cross-point by
shifting camera chips behind the cameras' lenses. Merritt Rep.
~ ~ 31, 33; see also Memorandum dated February 21, 2012 at 15-16
n.3 (noting a distinction in the parallel camera arrangement
between lenses' optical axes and cameras' optical axes) .
According to Tomita's expert, the images captured by the 3DS's
left and right cameras converge approximately ten inches from the
cameras' lenses, suggesting that the image sensors in the cameras
are not centered behind the cameras! lenses. Merritt Rep. ~ 50.
4 By focusing on claim eight! the Court does not imply that Tomita
could not show infringement of other claims in the '664 patent.
Rather, the Court merely uses the discussion of measuring cross-point
information in claim 8, a dependent claim, as an example of how a
system can infringe on claim one without emphasizing optical axes.
10
Tomita's expert further claims that the 3DS automatically focuses
on the closest object that occupies more than twenty percent of
the captured area. Id. ~ 80. Thus, a reasonable jury could infer
that, by jointly focusing on the same object, the 3DS's cameras
form a cross-point "based on the position of an object in the
images picked up."
Tomita has further produced evidence that would permit a
reasonable jury to infer that the 3DS measures information about
the cross-point its cameras produce. Because of the difference in
the two cameras' locations, the object on which both cameras
focus will occupy a different position in the image picked up by
each camera. The offset between that location in each of the
images is cross-point information. For example, as the object on
which the 3DS's cameras' focus gets farther away from the
cameras, the offset between its location in each camera's image
gets smaller. Merritt Rep. ~ ~ 57-58. Because these factors
directly correlate with one another, the 3DS could calculate the
cross-point based on the position of the object within the images
captured by its two cameras. Id.
5
Tomita's expert has produced
5 Although Tomita has not made this connection, one can translate
information about the position of the focused-upon object in the image
captured by each camera into information about the cameras' optical
axes. Cameras in a parallel arrangement can, as described above, shift
image sensors located behind the lenses to generate intersecting
optical axes. Because the position of the object on which the cameras
focus in the captured scene will determine the location of the image
sensor behind the lens, cf. Merritt Rep. ~ 50, it will also determine
11
evidence that one can readily see "how the offset changes when
objects in a scene being captured are closer to or farther from
the 3DS," which indicates that "the 3DS is determining and
changing cross-point information." Id. ~ 58. A reasonable jury
could er from this evidence that the 3DS measures cross-point
information exactly as the patent describes in claim eight, i.e.,
by calculating "the cross-point based upon the position of
an object [the images picked up by the] two pick-up means
which are disposed in a parallel relationship." '664 patent at
22:30 34; see also Memorandum dated February 21, 2012 at 20
(construing relevant claim terms).6
Second, Nintendo argues that the 3DS does not offset the
left- and right eye images based upon "information on the size of
the image which displayed." Instead, Nintendo points out that
the 3DS manipulates ft and right-eye images based upon
the cameras' optical axes and the point at which they intersect.
6 Nor need one be concerned by the supposed circularity that Nintendo
identifies. The parties acknowledge that the '664 patent seeks "to
provide a stereoscopic video image pick-up and display which is
capable of providing the stereoscopic video image having natural
stereopsis even if the video image producing and playback conditions
are different" (emphasis added). Images recorded by two different
situated cameras will unavoidably have some offset. That offset will
not, however, be the offset for display. Instead, as
explained in the Court's previous Memorandum, the offset the
displays will preserve ratios between certain distances from the
captured scene -- , the ratio of the distance between the cameras
to the distance from cameras to the cross-point. Memorandum dated
February 21, 2012 at 21. Thus, the patented system can determine the
offset between images in the presented scene based, in part, on the
offset between those in the recorded scene.
12
resolution in pixels. Infringement 56.1 Statement, 23. According
to Nintendo, physical size does not always correlate to pixel
specifications. For example, 32", 55", 60", and 70" HD
televisions can all have a resolution of 1920 pixels by 1080
pixels. Decl. of Jan Michael Frahm dated February 20, 2012
("Frahm Decl.") Ex. A , 148. Because the system covered by claim
one of the '664 patent offsets images based, in part, on
"information on the size of the image which is displayed,"
Nintendo's distinction, if accepted, would entitle it to summary
judgment on Tomita's claims for infringement.
Nonetheless, Tomita has produced evidence that would allow a
reasonable jury to find that the 3DS offsets left- and right-eye
images based on the size of those images. Tomita's expert asserts
that, because pixels in the 3DS have a fixed phys size, the
number of pixels in an image determines the physical size of that
image in the 3DS's display. Merritt Decl. , 6. Moreover, Tomita
has produced evidence that the 3DS uses a \\scaling factor" that
incorporates information about images' size when it displays
images. Merritt Rep. , 98. Specifically, one of the 3DS's
programming manual provides that:
When displaying images read using ImageDb, please
usually offset the image left and right in accordance
with the GetOffsetH{) value.
Since this value indicates the amount of movement for
the image pixels, it must be made larger or smaller to
match the size of the display on the screen.
13
Declaration of Alexander Solo in Support of Tomita Technologies'
Response to Nintendo's Motion for Summary Judgment of Non
Infringement dated March 6, 2012 ("Infringement Solo Decl.") Ex.
G. At his deposition, Tomita's expert explained that the 3DS
calculates the scaling factor based on the ratio between the
number of pixels in the relevant image and the number of pixels
in the display screen. Infringement Solo Decl. Ex. B at 111:9
113:21. Thus, with respect to the 3DS's screen, because the
pixels in the 3DS's screen have a fixed size, calculating the
offset based upon the number of pixels in an image is the same as
calculating it based on the image's size. Moreover, if the 3DS
wanted to present three-dimensional images on a screen with a
different size, it could make the offset or smaller to
match the size of the display screen" by using the scaling factor
to preserve the ratio between the number of pixels in the image
and the number of pixels in the screen. Because only one image
size will preserve this ratio, a reasonable jury could find that
the data on which the 3DS relies when it uses the scaling factor
equivalent to image size. Accordingly, a reasonable jury could
find that the 3DS substantially the same function, in
substantially the same way, to achieve substantially the same
result, as disclosed in the claim," infringing under the doctrine
of equivalents. Abbott Labs., 566 F.3d at 1296.
14
Finally, Nintendo argues that the 3DS's AR Games application
does not infringe the '664 patent because that application does
not utilize a "manual entry unit," which is a required component
of the offset presetting means's structure. See Memorandum dated
February 211 2012 at 18. Whereas both the 3DS
/
s circle pad and
the image adjustment option on its touch screen function in the
camera application, neither functions the AR Games
application. Infringement 56.1 Statement 28. Moreover, the
parties agree that, in the AR Games application, the 3DS's 3D
depth slider only determines whether the 3DS will display a
single image -- turning three-dimensional viewing "off" -- or
two, offset images turning three-dimensional viewing "on." The
parties dispute whether, by turning three dimensional viewing on
or offl the 3D depth slider operates as a manual entry unit
within the offset presetting means/s structure.
To infringe the '664 patent, "the relevant structure" in the
3DS must "perform the identical function recited in the claim."
____ 389 F.3d at 1378 (quoting Odetics, 185 F.3d at
1267). The offset presetting means performs the function of
"offsetting and displaying . . different video images based
upon. . video image information, . cross-point information
and information on the size of the image which is displayed by
said stereoscopic video image display device.
1I
Memorandum dated
February 21, 2012 at 17. The structure that performs this
15
function is comprised of "a circuit and a manual entry unit that
sets the offset," as described in several passages in the '664
patent's specification. Id. at 18-19. In the Court's earlier
Markman proceeding, neither party advocated a construction of
offset presetting means that attributed any specific aspect of
the means's function to an individual component of its structure.
A reasonable jury could find that the 3DS's 3D depth slider
constitutes a component of the offset presetting means's
structure, performing one aspect of "the identical function
recited in the claim." Specifically, the '664 patent notes that
the "manual entry unit may be switch [sic] . which is
actuated by the viewer depending upon user's preferences for
changing the operation conditions of the display control
circuit." '664 patent at 15:58-67. Both parties acknowledge that
the 3D depth slider functions in the AR Games application as a
"switch," allowing the user to exercise control over the display
control circuit's operation conditions. Specifically, the 3D
depth slider allows the viewer to determine whether the display
circuit presents an offset at all.
7
Thus, a reasonable jury could
7Because the parties agree upon the relevant facts, and dispute only
whether the '664 patent covers systems in which the manual entry unit
performs only the role described above, the issue may not be
appropriate for resolution by a jury. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372 (1996) (noting that construction
of a patent's claims, "the portion[s] of the patent document that
definer] the scope of the patentee's rights," "is exclusively within
the province of the court."). To the extent that the Court must
16
find that the manual entry unit, along with the circuits
described in the '664 patent, performs the function of
"offsetting and displaying" video images by allowing the user to
determine whether the circuits will display an offset. Because
the Court finds each of Nintendo's three supporting arguments
unpersuasive, it denies Nintendo's motion for summary judgment on
Tomita's claim that Nintendo infringed the '664 patent.
The Court next considers whether a reasonable jury could
conclude that Nintendo willfully infringed the '664 patent. With
respect to Tomita's claims of willful infringement, the parties
agree on the following facts. The '664 patent issued on August
26, 2008. Def.'s Rule 56.1 Statement in Support of Their Motion
for Summary Judgment of No Willful Infringement ("Willfulness
56.1 Statement") ~ 1. Tomita did not "specifically notify"
Nintendo of the '664 patent prior to commencing this lawsuit on
June 22, 2011. Id. ~ ~ 8-9. Tomita did not have any direct
communications with Nintendo between September 2003 and June 22,
2011, the dated on which Tomita filed this lawsuit. Id. ~ ~ 2, 13
15. Prior to filing this case, Tomita had never had any
communications with Nintendo's American subsidiary. Id. Despite
resolve this issue, it finds, essentially for the reasons stated
above, that the '664 patent covers systems in which the manual entry
unit operates only as an on/off "switch."
17
accusing Nintendo of willful infringement, Tomita has not moved
for a preliminary injunction barring infringement. Id. , 6.
Tomita bases its allegations of willfulness on the following
evidence. In August 2003, Mr. Tomita met with representatives
from Nintendo for the purpose of demonstrating his technology.
Decl. of Alexander Solo dated March 6, 2012 ("Willfulness Solo
Decl.
H
) Ex. A ("Tomita Dep.H) at 101:3-6. Kaga Electronics
("Kaga"), which allegedly hoped to create a 3D display module for
Nintendo, had arranged the meeting between Mr. Tomita and
Nintendo employees, and several of Kaga's employees attended. Id.
at 98:21-101:9. Prior to the meeting, Mr. Umezu, a Nintendo
employee who led Nintendo's efforts to develop both the hardware
and the software for the 3DS, sent an email to the research and
engineering department that indicated that Kaga had said that
Tomita's technology was "original,H that it was "also being
considered for medical applications," and that the" 1 of the
demo has been extremely good . . and people seem to be
surprised at the degree of precision.
H
Willfulness Solo Decl. Ex.
Jj id. Ex. H at 17, 53. Another Nintendo employee, Mr. Kiyuna,
responded, "I'm interested. Please show it to us, but don't
convey that we're too interested.
H
Id. Ex. L. When asked at his
deposition what he meant, Mr. Kiyuna said, "This is what we
always say when a technology is introduced. We do not want to
show too much interest when the technology is introduced so that
18
if the technology is used, we can be in a stronger position." Id.
Ex. H at 68:18 22.
Tomita has produced evidence that seven Nintendo employees
attended the August 2003 demonstration: Mr. Kiyuna, Mr. Murakami,
Mr. Takada, Mr. Iijima, Mr. Sumi, Mr. Ohashi, and Mr. Otani. Id.
Ex. A 102:18 20j id. Ex. Gi id. Ex. H at 38:5-7. Mr. Kiyuna
helped develop the 3DS's "LCD module containing 3D function and
the LCD module of the touch panel of the 3DS display device./I Id.
Ex. H at 15:3-6. Mr. Murakami also helped to design the "3DS LCD
module and touch panel." Id. at 45:24-46:2. While Mr. Takada
worked on "mechanism design" in 2003, he later transferred to a
department that evaluated products, including the 3DS. Id. at
43:18-45:6. Mr. Iijima "did work related to the debugging of game
software for the 3DS." Id. at 47:1 3.
Nintendo had previously declined to meet with Tomita because
Tomita had insisted on a nondisclosure agreement. Id. at 63:2-3.
Instead of requesting a nondisclosure agreement for the August
2003 meeting, Tomita filed a Patent Cooperation Treaty ("PCT")
application in March 2003. Id. Ex. A at 104:5 14. Tomita told the
Nintendo representatives with whom he met that he had applied for
a patent both in Japan and under the PCT, but he "did not go so
far as to tell them the numbers." Id. at 103:23-104:4.
At the meeting, Tomita demonstrated his prototype for an
hour and a half. Id. at 105:15-108:3. According to Tomita, the
19
Nintendo employees who attended were "very excited," and they
called their technical people. rd. at 108:19-23. About a month
after the meeting, a representative from Kaga called Tomita on
behalf of Nintendo and asked if he could create a sample with a
smal screen. rd. at 120:6-23. Tomita advised the
representative that he would require payment for creating such a
sample and that he would want to enter a technical cooperation
agreement or a license agreement. rd. at 121:8-12. The
representative from Kaga made no further contact with Mr. Tomita.
rd.
Mr. Kiyuna stated in his deposition that he did not remember
whether, at the August 2003 meeting, Tomita had mentioned any
patent applications. rd. Ex. H at 77:7-12. Nintendo began
developing the 3DS in either 2007 or 2008. rd. at 14:7 16.
Nintendo's American subsidiary conducts patent clearance searches
"from time to time . before [it] introduce[s] a new product."
rd. Ex. M at 140:19-22.
To establish willful infringement, a plaintiff must make
both an objective and a subjective showing. rn re Seagate Tech.,
LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). First, "a patentee
must show by clear and convincing evidence that the infringer
acted despite an objectively high likelihood that its actions
constituted infringement of a valid patent." rd. "The state of
mind of the accused infringer is not relevant to this objective
20
inquiry.1I Id. Even if the patentee can make the required
objective showing, it must further "demonstrate that this
objectively-defined risk (determined by the record developed in
the infringement proceeding) was either known or so obvious that
it should have been known to the accused infringer.
1I
Id. Tomita
alleges willful infringement both before and after the filing of
this action. When deciding a motion for summary judgment, the
Court must take must take the heightened standard of proof - in
this case, the requirement of clear and convincing evidence
into account. Anderson v. Liberty Lobby, 477 U.S. 242, 254-55
(1986) .
With respect to the objective prong of the Seagate test, the
parties do not dispute that the '664 patent issued before
Nintendo began distributing the 3DS in America. Compare
Willfulness 56.1 Statement ~ 1, with Willfulness Solo Decl. Ex. N
at 94:2-8. Nintendo argues that, because has advanced three
legitimate defenses to Tomita's claims of infringement, Tomita
cannot prove that "an objectively high likelihood" of
infringement ever existed. Black & Decker, Inc. v. Robert Bosch
Tool Corp., 260 F. App'x 284, 291 (Fed. Cir. 2008). Nonetheless,
the Court concludes that a reasonable jury could find, based on
clear and convincing evidence, that Nintendo's defenses are so
unpersuasive that "an objectively high likelihood" of
infringement in fact sts. As noted above, Nintendo's defenses
21
rely on strained interpretations of the '664 patent. For example,
Nintendo relies on the non sequitur that, because the cross-point
is the "cross-point optical axes," the system described in the
'664 patent must incorporate information about optical axes into
its method for measuring cross-point information. This argument
not only fai as a logical proposition, but also ignores a claim
in the '664 patent that describes how to calculate cross-point
information without reference to optical axes. See '664 patent at
22:30-35.
8
The mere existence of a defense cannot preclude that
possibility of an "objectively high likelihood" of infringement.
Indeed, those who knowingly infringe a patent presumably attempt
to manufacture defenses, however contrived and unavailing they
may prove. Accordingly, the Court finds that Tomita has satisfied
the objective prong of the Seagate test.
The sUbjective prong of the Seagate test presents a more
complicated question. Nintendo argues that Tomita cannot satisfy
the subjective prong of the Seagate test because it has produced
no evidence that Nintendo knew of the '664 patent. See State
8Nintendo's other defenses fail for similar reasons. First, Nintendo's
distinction between the size of an image and its resolution in pixels
ignores that, for a given screen, size and resolution in pixels
directly correlate with one another, a correlation on which the 3DS
allegedly relies in certain circumstances. Final , Nintendo's
argument that the 3D depth slider cannot function as a "manual entry
unity" in the AR Games application applies only to one of the 3DS's
applications and, in any event, ignores that the '664 patent describes
the "manual unit" as a "switch." '664 patent at 15:58-67.
22
Indus. Inc. v. A , 751 F.2d 1226, 1236 (Fed. Cir.
1985) (ftTo will ly infringe a patent, the patent must exist and
one must have knowledge of it."). While Seagate does not include
actual knowledge of a patent among the requirements for willful
infringement, Nintendo argues that, logically, for a risk of
infringement to have been "so obvious that it should have been
~ ~ n , " t ~ leged infringer must at least have had knowledge of
the existence and scope of the allegedly infringed rights.
Nintendo relies heavily on State Industries, where the Federal
Circuit wrote:
A "patent pending" notice gives one no knowledge
whatsoever. It is not even a guarantee that an
application has been filed. Filing an application is no
guarantee any patent will issue and a very substantial
percentage of applications never result in patents.
What the scope of claims in patents that do issue will
be is something totally unforeseeable.
751 F.2d at 1236. Analogizing Mr. Tomita's mention of his PCT
application to a ftpatent pending" notice, Nintendo concludes that
its employees had no bas for inferring that a valid patent
would issue or that it would cover what the '664 patent in fact
covers.
Nonetheless, Seagate routinely refers to willfulness as a
form of recklessness. 497 F.3d at 1370-71. Recklessness, as the
Seagate test acknowledges, depends not upon knowledge of any
specific facts, but instead upon knowledge or near-knowledge of
an objective risk. While an leged infringer may often need to
23
know of a patent's existence and scope in order to adequately
comprehend the risk she faces, this case amply demonstrates that,
in certain circumstances, an al infringer can know of an
ftobjectively high likelihood" of infringement even though she
does not know that the relevant patent has issued. Here, Tomita
has produced evidence that Mr. Tomita specifically told Nintendo
employees that he had applied a patent under the PCT. Tomita
has further shown that the '664 patent is virtually identical to
an English translation of the application that Mr. Tomita
submitted to the PCT. Willfulness Solo Decl. Ex. C.
A reasonable jury could conclude that the Nintendo employees
who attended the demonstration could have inferred and did infer,
based on Kaga's representations about the originality of
, s
technology and based on their own excitement over the
demonstration, that patent that ultimately issued would
closely track the appl ion about which Mr. Tomita had informed
them. Thus, in contrast to State Industries, where the plaintiff
succeeded in patenting its invention only after allegedly
infringing product entered the market, 751 F.2d at 1236, the
scope of the protection that Tomita's invention would receive was
not "totally unforeseeable." Indeed, had Nintendo had any
questions about the scope of the patent that ult ly issued,
it could have answered those questions by searching for the
actual patent, which issued only shortly after Nintendo began
24
developing the 3DS and years before Nintendo first distributed
the 3DS in the United States. The same employees who attended the
demonstration helped to develop the 3DS, and a reasonable jury
could find that they would have understood the similarities
between the 3DS and the prototype Mr. Tomita had shown them. To
require actual knowledge of the patent at issue in circumstances
such as these -- where evidence suggests that the alleged
infringer knew of the value of an invention, of the investor's
intention to obtain a patent, and of the similarity between the
allegedly infringing product and the invention -- would allow
even copiers to shelter themselves from liability for willfulness
merely by avoiding confirmation of what they, in essence, already
knew. Accordingly, the Court rejects Nintendo's argument that
Tomita must show that Nintendo knew of the '664 patent and finds
that the evidence Tomita has provided would allow a reasonably
jury to conclude that Nintendo ignored an "objectively high
likelihood" of infringement that was "so obvious that it should
have been known."
Furthermore, even if Tomita needed to prove that Nintendo
had actual knowledge of the '664 patent, it has produced evidence
that would allow a reasonable jury to infer such knowledge. As
described above, Nintendo did not release the 3DS until years
after the '664 patent had issued. Nintendo employees had seen Mr.
Tomita's prototype and heard that Tomita had filed a patent
25
application with the peT. The '664 patent is virtually identical
to the patent appl ion of which Nintendo's employees had
notice. Moreover, Nintendo "from time to time conduct[s] patent
clearance before [it] introducers] a new product."
Willfulness Solo Decl. Ex. M at 140:9-24. While Nintendo's
witnesses, relying on Nintendo's counsel's assertions of
privilege, see id. at 1416 15, did not specify whether the
company conducted clearance searches in connection with the
release of the 3DS, a jury could infer from the fact
that Nintendo often conducted clearance searches and the fact
that its employees knew cisely what to search for that
Nintendo in fact conducted searches in connection with
the release of the 3DS and discovered the '664 patent.
Finally, Nintendo argues , even if Tomita's claim for
pre-filing willful infringement can overcome a motion for summary
judgment, its motion for post-fil willful infringement should
not proceed because Tomita has not sought a preliminary
injunction. See Seagate, 497 F.3d at 1374 (\\A patentee who does
not attempt to stop an accused 's activities in this
manner should not be allowed to accrue enhanced damages based
solely on the infringer's post-filing conduct."). Nonetheless:
The pursuit of preliminary injunction may 1
reasons other than its lack of merit on the underlying
claim. Even a strong claim for injunctive relief will
ordinarily fail when an inventor, who does not
26
the invention and does not compete with the infringer,
sues injunction.
Krippelz v. Ford Motor CO'
I
670 F. Supp. 2d 806
1
812 (N.D. Ill.
2009) I rev/d on other grounds I 667 F.3d 1261, 1269 (Fed. Cir.
2012) (finding claim at issue invalid). Here, Tomita does not
manufacture products and thus does not compete with Nintendo in
selling handheld gaming systems. Willfulness Solo Decl. Ex. Q at
6. Thus, even with a strong infringement claim, would have had
difficulty showing that remedies available at law could not
compensate it for its injuries, which presumably consist of lost
licensing fees. Cf. eBay v. MercExchange L.L.C., 547 U.S. 388,
391-93 (2006).
Moreover, Tomita does not seek enhanced damages based
"solely on the infringer's post-filing conduct
l
H
but instead, as
noted above, has identified substantial evidence of filing
willful infringement. It is one thing to assert that a claim
alleging willfulness based solely on a defendant's reaction to
notice that a lawsuit inevitably provides may be
insufficient; but once pre-filing willfulness has been shown, it
may be presumed to continue beyond the filing date. Accordingly,
the Court denies Nintendo's motion for summary judgment on
Tomita's claims for pre-filing and post filing willful
infringement.
27
In sum, for the foregoing reasons, the Court reaffirms its
bottom-line order dated April 20, 2012.
Dated: New Y ~ ~ , New York
June ~ , 2012
28

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