DCT

2:14-cv-02304

RealD Inc v. MasterImage 3D Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:14-cv-02304, C.D. Cal., 10/07/2014
  • Venue Allegations: Venue is alleged to be proper based on Defendant MasterImage 3D, Inc.'s principal place of business in the district, offers for sale and sales of products to customers in California, and other systematic contacts with the district.
  • Core Dispute: Plaintiff alleges that Defendant’s MI-Horizon3D digital and dual digital cinema systems infringe four patents related to polarization conversion systems for improving the brightness of stereoscopic 3D projections.
  • Technical Context: The technology addresses the problem of low image brightness in 3D cinema, which results from conventional polarizers blocking more than half of a projector's light.
  • Key Procedural History: The complaint alleges Defendants were on notice of the patents-in-suit as of October 22, 2013, via a cease and desist letter. Subsequent to the filing of this complaint, two of the asserted patents were challenged in Inter Partes Review (IPR) proceedings. In IPR2015-00040, claims 1, 6-10, and 18-20 of the '934 patent were cancelled. In IPR2015-00035, claims 1-23 of the '455 patent were confirmed as patentable.

Case Timeline

Date Event
2006-09-29 Priority Date for '934 and '602 Patents
2006-10-18 Priority Date for '455 and '296 Patents
2010-12-28 U.S. Patent No. 7,857,455 Issued
2011-03-15 U.S. Patent No. 7,905,602 Issued
2011-06-14 U.S. Patent No. 7,959,296 Issued
2012-07-17 U.S. Patent No. 8,220,934 Issued
2013-10-22 Date Defendants allegedly received cease and desist letter from Plaintiff
2014-10-07 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,220,934 - Polarization Conversion Systems for Stereoscopic Projection (Issued July 17, 2012)

The Invention Explained

  • Problem Addressed: Conventional 3D projection systems use a linear polarizer that absorbs the orthogonal polarization state, resulting in a light flux that is "typically less than half of the original flux" and a "dimmer final image" ('934 Patent, col. 1:49-54).
  • The Patented Solution: The invention is a polarization conversion system (PCS) that receives randomly-polarized light from a projector lens and splits it into two separate light paths using a polarizing beam splitter (PBS), for example, separating s-polarized and p-polarized light. The polarization of one path is then rotated to match the other (e.g., s- becomes p-polarized). The two now-parallel polarized light paths are directed toward the screen, substantially overlapping to form a single, brighter image ('934 Patent, Abstract; col. 3:5-40, Fig. 2A).
  • Technical Importance: This approach conserves light that would otherwise be discarded, which may nearly double the brightness of the projected 3D image compared to conventional systems ('934 Patent, col. 3:35-40).

Key Claims at a Glance

  • The complaint asserts "one or more claims" of the patent (Compl. ¶12). Independent claim 12 is representative.
  • Independent Claim 12 Elements:
    • A polarization conversion system comprising:
    • a polarization beam splitter (PBS) operable to receive randomly-polarized light bundles...and direct first light bundles having a first state of polarization (SOP) along a first light path, and direct second light bundles having a second SOP along a second light path;
    • a polarization rotator located on the second light path...operable to translate the second SOP to the first SOP;
    • a polarization switch subsystem operable to receive first and second light bundles...and to selectively translate the polarization states of both...to one of a first output SOP and a second output SOP;
    • a telephoto lens pair located on the first light path.
  • The complaint reserves the right to assert additional claims (Compl. ¶12). It should be noted that a post-filing IPR proceeding resulted in the cancellation of original claims 1, 6-10 and 18-20 ('934 Patent, IPR Certificate).

U.S. Patent No. 7,857,455 - Combining P and S Rays for Bright Stereoscopic Projection (Issued Dec. 28, 2010)

The Invention Explained

  • Problem Addressed: The patent identifies the "low brightness of the image on the screen" as a "primary concern relating to stereoscopic image projection," caused by absorption polarizers that reduce image brightness by at least fifty percent ('455 Patent, col. 1:15-20).
  • The Patented Solution: The invention uses a "polarizing splitting element" to separate incoming light into a primary path and a secondary path (e.g., P and S rays). The secondary path is directed to a reflector, while one of the paths has its polarization rotated (e.g., by a half wave retarder) to match the other. Both paths are then modulated by polarization modulators and directed toward the screen to form a combined, brighter image ('455 Patent, Abstract; Fig. 3).
  • Technical Importance: By splitting the light and re-using both polarization components, the system aims to "in essence almost doubl[e] the amount of light energy projected on the screen" compared to prior art systems that discard one polarization ('455 Patent, col. 3:20-24).

Key Claims at a Glance

  • The complaint asserts "one or more claims" of the patent (Compl. ¶19). Independent claim 1 is representative.
  • Independent Claim 1 Elements:
    • An apparatus for projecting stereoscopic images, comprising:
    • a polarizing splitting element configured to receive image light energy and split it into a primary path and a secondary path;
    • a reflector configured to receive path light energy from one of primary path energy and secondary path light energy and to direct said path light energy toward a surface; and
    • a first polarization modulator positioned in the primary path and configured to... uniformly modulate the primary path of light energy... and transmit primary path modulated light energy toward the surface.
  • The complaint reserves the right to assert additional claims (Compl. ¶19). A post-filing IPR proceeding confirmed all claims (1-23) of the patent as patentable ('455 Patent, IPR Certificate).

Multi-Patent Capsule: U.S. Patent No. 7,959,296

  • Patent Identification: U.S. Patent No. 7959296, "Combining P and S Rays for Bright Stereoscopic Projection," issued June 14, 2011.
  • Technology Synopsis: As a continuation of the '455 patent, this invention describes a stereoscopic projection apparatus for dual-projector setups. Each projector is equipped with a system to split light into two paths (primary and secondary), rotate the polarization of one path, and direct both paths to the screen to enhance brightness ('296 Patent, col. 2:35-54).
  • Asserted Claims: The complaint asserts "one or more claims" (Compl. ¶26). Key independent claims include 1 and 18.
  • Accused Features: The complaint accuses the "MI-Horizon3D digital cinema system and MI-Horizon3D dual digital cinema system" of infringement (Compl. ¶26).

Multi-Patent Capsule: U.S. Patent No. 7,905,602

  • Patent Identification: U.S. Patent No. 7905602, "Polarization Conversion Systems for Stereoscopic Projection," issued March 15, 2011.
  • Technology Synopsis: Related to the '934 patent, this invention describes a polarization conversion system that splits light from a projector into first and second paths, uses a polarization rotator on one path, and includes a telephoto lens pair to help manage the optical properties of the system, ultimately projecting a brighter 3D image ('602 Patent, Abstract).
  • Asserted Claims: The complaint asserts "one or more claims" (Compl. ¶33). Key independent claims include 1 and 15.
  • Accused Features: The complaint accuses the "MI-Horizon3D digital cinema system" of infringement (Compl. ¶33).

III. The Accused Instrumentality

  • Product Identification: The complaint names the "MI-Horizon3D digital cinema system" as the primary accused instrumentality (Compl. ¶8). For the '296 patent, it also names the "MI-Horizon3D dual digital cinema system" (Compl. ¶26).
  • Functionality and Market Context: The complaint does not provide specific technical details regarding the operation of the accused systems. It alleges in a conclusory manner that the products "embody one or more claims" of the patents-in-suit (e.g., Compl. ¶12, ¶19). The context of the allegations indicates these are systems used in digital cinema theaters for projecting stereoscopic (3D) motion pictures.
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,220,934 Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
a polarization beam splitter (PBS) operable to receive randomly-polarized light bundles... and direct first light bundles... along a first light path, and direct second light bundles... along a second light path The complaint alleges the MI-Horizon3D system contains a component that receives light from a projector and splits it into two separate light paths based on polarization. ¶33 col. 3:11-17
a polarization rotator located on the second light path... operable to translate the second SOP to the first SOP The complaint alleges the accused system contains an element in one of the light paths that rotates its polarization state to match the polarization of the other path. ¶33 col. 3:21-24
a polarization switch subsystem operable to receive first and second light bundles... and to selectively translate the polarization states of both... to one of a first output SOP and a second output SOP The complaint alleges the accused system contains a component that receives the two light paths and alternates their polarization to create the left-eye/right-eye images for 3D viewing. ¶33 col. 3:25-31
a telephoto lens pair located on the first light path The complaint alleges the accused system contains a telephoto lens pair in one of its light paths to manage the image magnification and distortion. ¶33 col. 4:58-60

Identified Points of Contention

  • Scope Questions: The primary dispute will concern whether the components in the MI-Horizon3D system fall within the scope of the claim terms. For instance, does the accused system's method of alternating images meet the definition of a "polarization switch subsystem," or does it operate differently? The subsequent cancellation of other claims in IPR suggests the patent's scope may be narrower than alleged.
  • Technical Questions: A key question is whether the accused system includes a "telephoto lens pair" performing the claimed function. The complaint provides no specific evidence, making this a central point for discovery and expert testimony.

U.S. Patent No. 7,857,455 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a polarizing splitting element configured to receive image light energy and split the image light energy received into a primary path... and a secondary path The complaint alleges the MI-Horizon3D system contains a component that splits light from the projector into two distinct paths with orthogonal polarizations. ¶19 col. 2:46-51
a reflector configured to receive path light energy from one of primary path energy and secondary path light energy and to direct said path light energy toward a surface The complaint alleges the accused system uses a reflector (e.g., a mirror) in one of the light paths to redirect that light toward the projection screen. ¶19 col. 2:51-53
a first polarization modulator positioned in the primary path and configured to... uniformly modulate the primary path of light energy... and transmit... toward the surface The complaint alleges the accused system contains a polarization modulator that acts on at least one of the light paths to encode the stereoscopic information. ¶19 col. 2:53-59

Identified Points of Contention

  • Scope Questions: The definition of "polarizing splitting element" will be crucial. Defendants may argue their component is structurally different or that the term should be limited to specific embodiments disclosed in the patent, such as a MacNeille prism or wire grid polarizer ('455 Patent, col. 5:21-23).
  • Technical Questions: The complaint's allegation is broad. A technical question is whether the accused product's "modulator" performs the "uniform modulation" required by the claim. The patent's survival of an IPR challenge suggests the claims are robust, shifting the focus to whether the accused product's specific operation can be proven to meet each element.

V. Key Claim Terms for Construction

For '934 Patent

  • The Term: "polarization switch subsystem"
  • Context and Importance: This term appears to be the active component that creates the time-sequential stereoscopic effect. Its definition is critical because infringement will depend on whether the specific architecture used by MasterImage to alternate between left- and right-eye images constitutes this "subsystem."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims describe the subsystem functionally as being "operable to...selectively translate the polarization states" ('934 Patent, col. 8:6-10). Plaintiff may argue this covers any component arrangement that performs this function.
    • Evidence for a Narrower Interpretation: The specification discusses specific implementations, such as switches taught by U.S. Patent No. 4,792,850 ('934 Patent, col. 4:22-24) and switches comprising multiple panels ('934 Patent, col. 8:11-17). Defendants may argue the term should be limited to these disclosed structures.

For '455 Patent

  • The Term: "polarizing splitting element"
  • Context and Importance: This is the core component that enables the light-recycling function of the invention. The case may turn on whether the specific splitter used in the MI-Horizon3D system is covered by this term. Practitioners may focus on this term because the patent's validity was confirmed in IPR, making the infringement read of this element a primary battleground.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term is described broadly as a device "able to create P and S beams with substantially orthogonal polarization states" ('455 Patent, col. 5:23-26), suggesting a functional rather than purely structural definition.
    • Evidence for a Narrower Interpretation: The specification explicitly lists examples, including "a polarizing beamsplitter such as a glass prism or MacNeille prism, or a wire grid polarizer" ('455 Patent, col. 5:20-23). Defendants could argue that the term's scope should be confined to these specific types of splitters or their equivalents.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b), stating Defendants induce infringement by their "customers and/or users" (e.g., Compl. ¶13, ¶20). The basis is the sale of systems that, when operated as intended, perform the patented methods. The complaint also alleges contributory infringement under 35 U.S.C. § 271(c), asserting the accused systems have "no substantial uses that do not infringe" and are "especially adapted for use in infringing" the patents (e.g., Compl. ¶14, ¶21).
  • Willful Infringement: Willfulness is alleged for all four patents. The complaint bases this allegation on Defendants having knowledge of the patents "since at least as early as October 22, 2013 when they received a cease and desist letter from RealD" and their subsequent continued sale of the accused products (e.g., Compl. ¶15, ¶22).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. Impact of IPR Outcomes: A central issue is the sharply divergent outcomes of the post-filing IPRs. The cancellation of key claims of the '934 patent severely weakens that portion of Plaintiff's case, while the confirmation of all claims of the '455 patent significantly strengthens the allegations on that patent, likely making it the focal point of the litigation.

  2. Definitional Scope: The case will likely hinge on claim construction. A core question is one of structural scope: can broadly defined terms like "polarizing splitting element" ('455 Patent) and "polarization switch subsystem" ('934 Patent) be interpreted to cover the specific hardware configurations used in the Defendants' MI-Horizon3D systems, or will they be narrowed to the specific embodiments disclosed in the patents?

  3. Evidentiary Proof of Infringement: Given the lack of technical detail in the complaint, a key question is one of evidentiary sufficiency: what evidence can Plaintiff produce in discovery to demonstrate that the accused systems actually perform each step and contain each element as required by the asserted claims, particularly for elements like the "telephoto lens pair" of the '602 and '934 patents.