VDPP LLC v. Mazda Motor Of America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: VDPP, LLC (Oregon)
  • Defendant: Mazda Motor of America, INC (California)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 8:24-cv-00571, C.D. Cal., 03/18/2024
• Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the district, having committed alleged acts of infringement in the district, and conducting substantial business in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services in the field of motion pictures infringe a patent related to electrically controlled spectacles for viewing 3D content.
• Technical Context: The technology concerns active shutter glasses designed to create a three-dimensional viewing experience from two-dimensional video, primarily by using multi-layer lenses to achieve faster transitions between light and dark states.
• Key Procedural History: An Ex Parte Reexamination Certificate for the patent-in-suit was issued on April 4, 2025, as a result of a request filed on March 18, 2024. The certificate confirmed the patentability of claims 2 and 4, which are asserted in this case. Claims 1 and 3 were not reexamined. This proceeding may impact arguments regarding the validity of the asserted dependent claims.

Case Timeline

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

U.S. Patent No. 9,426,452 - "Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials"

• Patent Identification: U.S. Patent No. 9,426,452, "Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials," Issued August 23, 2016.

The Invention Explained

• Problem Addressed: The patent describes a problem with electronically controlled variable tint glasses used to create 3D effects from 2D movies. These glasses can have slow "transition times" when switching between optical states (e.g., clear and dark), which prevents them from properly synchronizing with fast-moving on-screen action. This is particularly an issue for large changes in tint required between different scenes ('452 Patent, col. 2:25-44). Additionally, the materials used may have a limited "cycle life," degrading after a certain number of clear-dark cycles ('452 Patent, col. 2:55-58).
• The Patented Solution: The invention proposes fabricating the spectacle lenses from multiple layers of electronically controlled variable tint material. This multi-layer construction is intended to achieve faster transition times than a single layer, with the tradeoff of a minimally darker clear state ('452 Patent, Abstract; col. 2:48-55). This approach is also described as a way to increase the operational "cycle life" of the spectacles ('452 Patent, col. 2:58-62). Figure 6b illustrates a lens composed of multiple distinct layers (e.g., 601, 611) to achieve this effect ('452 Patent, Fig. 6b).
• Technical Importance: This approach sought to enhance the performance and durability of active shutter glasses, aiming to make the 3D illusion more responsive and robust, which was a significant factor in the development of 3D viewing technologies ('452 Patent, col. 2:35-44).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2-4 (Compl. ¶10).
• Independent Claim 1 requires:
  • A system for presenting a video, comprising an apparatus and an electrically controlled spectacle.
  • The apparatus includes a storage for video frames and a processor adapted to "reshape a portion" of at least one frame.
  • The electrically controlled spectacle includes a frame, optoelectronic left and right lenses, and a control unit housed in the frame.
  • The lenses have a "plurality of states," including a dark state and a light state, and the control unit independently controls each lens.
  • The control unit performs the function of placing "both the left lens and the right lens to a dark state" when viewing the video.

III. The Accused Instrumentality

Product Identification

• The complaint accuses "systems, products, and services in the field of motion pictures that infringes one or more of claims of the '452 patent" that are maintained, operated, and administered by the Defendant (Compl. ¶10).

Functionality and Market Context

• The complaint does not identify a specific product by name or provide any technical details regarding its functionality or operation. It provides a generic example of an infringing system as one "related to an electrically controlled spectacle frame and optoelectronmic lenses housed in the frame" (Compl. ¶11). The complaint does not allege any facts regarding the commercial importance or market position of any accused product.

IV. Analysis of Infringement Allegations

The complaint references an infringement claim chart in an "Exhibit B" that was not provided with the filed complaint (Compl. ¶11). No probative visual evidence provided in complaint.

In the absence of a claim chart, the infringement theory is based on the narrative allegations in the complaint. The Plaintiff alleges that the Defendant directly infringes, either literally or under the doctrine of equivalents, claims 1-4 of the ’452 Patent (Compl. ¶10). The basis for this allegation is that the Defendant "maintains, operates, and administers" systems that practice the claimed invention, which the complaint alleges involves "an electrically controlled spectacle frame and optoelectronmic lenses" (Compl. ¶¶10-11). The complaint further alleges that the Defendant's actions "caused those claimed-invention embodiments as a whole to perform" (Compl. ¶10).

• Identified Points of Contention:
  • Factual Basis: A primary point of contention will be factual, centering on whether the Plaintiff can identify any specific product or service from the Defendant that meets all the limitations of Claim 1. The complaint's lack of specificity raises the question of whether an adequate pre-suit investigation was conducted to identify an accused instrumentality.
  • Scope Questions: The case raises the question of whether any of the Defendant's products, presumably in-car entertainment systems, can be considered a "system for presenting a video" that includes or operates with "an electrically controlled spectacle" as required by the claim.
  • Technical Questions: A key technical question for the court will be whether any accused product performs the two specific functions recited in Claim 1: the processor-level function of "reshap[ing] a portion of at least one of the one or more image frames" and the spectacle-level function where the control unit "places both the left lens and the right lens to a dark state."

V. Key Claim Terms for Construction

• The Term: "reshape a portion of at least one of the one or more image frames"

• Context and Importance: This term defines a specific action that the processor in the claimed "apparatus" must perform. The patent links this concept to methods for creating a 3D effect, such as blending or superimposing images ('452 Patent, col. 5:32-35). Proving that an accused system performs this "reshaping" function is essential for a finding of infringement.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue that "reshape" is a general term encompassing any digital manipulation of a video frame, such as scaling, cropping, or altering pixel data, not just the specific 3D-creation methods described.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of what this process entails, such as blending, superimposing, or stitching images to create an "Eternalism" effect ('452 Patent, col. 9:59-col. 10:2). A party may argue that the term should be limited to these disclosed video processing techniques for creating a 3D illusion.

• The Term: "wherein when viewing the video the control unit places both the left lens and the right lens to a dark state"

• Context and Importance: This final limitation of Claim 1 recites a specific function of the spectacle's control unit. Its construction is critical because it appears to conflict with the primary embodiment described in the patent. Practitioners may focus on this term because the specification contains language that could be interpreted as a direct disavowal of this feature.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party advocating for infringement might argue that "a dark state" is a relative term that does not require full opacity and could refer to a state used for specific functions other than the primary 3D effect, such as the "sunglasses" feature discussed in an alternative embodiment ('452 Patent, col. 27:30-39).
  • Evidence for a Narrower Interpretation: A party challenging infringement would almost certainly point to the specification's explicit statement: "The lens state consisting of both left and the right lens darkened is not used by any of the 3Deeps spectacles" ('452 Patent, col. 21:31-33). This language may be presented as a clear and unambiguous disavowal of claim scope, raising the question of whether the claim itself is invalid for lacking written description support or whether its scope must be read to exclude this feature.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement, asserting that the Defendant encouraged or instructed its customers on how to use the accused products in an infringing manner (Compl. ¶¶11, 12). The complaint does not cite specific user manuals, marketing materials, or other evidence to support these allegations.
• Willful Infringement: Willfulness is alleged based on the Defendant’s knowledge of the ’452 Patent from "at least the filing date of the lawsuit" (Compl. ¶¶11, 12). The Plaintiff reserves the right to amend the complaint if pre-suit knowledge is discovered (Compl. ¶11, fn. 1).

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

• A central issue will be one of factual pleading and proof: given the complaint’s lack of specificity, can the Plaintiff identify a concrete accused product and provide evidence that it performs the specific video processing ("reshape a portion") and spectacle control ("both lenses to a dark state") functions required by Claim 1?
• A dispositive legal question will be one of claim scope versus specification disclaimer: how will the court reconcile the language of Claim 1, which requires placing both lenses in a dark state, with the patent’s explicit statement that this "is not used by any of the 3Deeps spectacles"? The resolution of this apparent contradiction will be fundamental to both infringement and validity analyses.
• A key strategic question will be the effect of the reexamination: how will the patent office's confirmation of dependent claims 2 and 4, which necessarily incorporate the disputed limitation from Claim 1, influence the parties’ strategies and the court’s view on the core issue of claim construction and potential disavowal?