DCT
1:17-cv-08717
Holotouch Inc v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HoloTouch, Inc. (Delaware)
- Defendant: Microsoft Corporation (Washington)
- Plaintiff’s Counsel: Carey Rodriguez Milian Gonya, LLP
- Case Identification: 1:17-cv-08717, S.D.N.Y., 11/09/2017
- Venue Allegations: Venue is alleged to be proper because Microsoft has committed acts of infringement and maintains a regular and established place of business in the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s HoloLens augmented reality headset infringes patents related to holographic, touchless control interfaces.
- Technical Context: The technology concerns human-machine interfaces that allow users to control electronic devices by interacting with projected holographic images rather than physical controls.
- Key Procedural History: The complaint alleges a long history between the parties, starting with a 2006 partnership proposal from HoloTouch to Microsoft. Notably, it alleges that Microsoft was aware of the patents-in-suit as early as October 2013, when Microsoft filed its own patent application that cited HoloTouch’s patents as prior art. Subsequent licensing discussions in 2015 and 2016 were allegedly declined by Microsoft. This history is cited to support the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1993-04-28 | Earliest Priority Date for ’238 Patent |
| 2002-04-23 | ’238 Patent Issued |
| 2003-07-03 | Earliest Priority Date for ’045 Patent |
| 2006-05-30 | ’045 Patent Issued |
| 2006-09 | HoloTouch contacted Microsoft to propose a partnership |
| 2013-10 | Microsoft filed a patent application citing HoloTouch patents as prior art |
| 2015-11 | HoloTouch contacted Microsoft regarding licensing |
| 2016-01 | HoloTouch again contacted Microsoft regarding licensing; Microsoft declined |
| 2017-11-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,377,238 - "Holographic Control Arrangement," issued April 23, 2002
The Invention Explained
- Problem Addressed: The patent identifies the drawbacks of conventional physical input devices like keyboards, including the risk of repetitive strain injuries (e.g., carpal tunnel syndrome), physical wear and tear, and hygiene concerns, especially in sterile environments (’238 Patent, col. 1:24-37).
- The Patented Solution: The invention proposes a "means by which an operator may control one or more devices without touching a solid control object or surface" (’238 Patent, col. 2:7-10). It achieves this through an interface that projects a holographic image of a familiar control, like a keyboard. A user interacts by passing a finger or pointer through the plane of this holographic image, and this "actuation" is detected by a sensor system, such as an optical grid or a laser scanner, which then sends a corresponding signal to the controlled device (’238 Patent, col. 2:15-27; col. 5:17-41).
- Technical Importance: The technology offered a paradigm for human-computer interaction that circumvented the mechanical and hygienic limitations inherent in the physical input devices that were dominant at the time.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-7 and 10 (Compl. ¶¶43, 49, 54, 58, 61, 65, 70, 73).
- Independent Claim 1 requires:
- An "image generator" for generating a holographic image of a tangible input object, with the holographic image being larger than the physical object it represents.
- An "actuation detector" for determining when the operator has selected the holographic image.
- A "signal generator" that receives the determination from the detector and provides an input signal to the controlled device.
U.S. Patent No. 7,054,045 - "Holographic Human-Machine Interfaces," issued May 30, 2006
The Invention Explained
- Problem Addressed: The patent notes that prior holographic HMI systems were often "relatively large and bulky, and they may consume relatively large amounts of power, making them impractical for some uses" (’045 Patent, col. 1:39-41).
- The Patented Solution: To solve this, the invention discloses a more compact and efficient HMI architecture. A key innovation is positioning the detecting sensors behind the hologram relative to the operator. This allows the sensors to "look through" the transparent or translucent material on which the hologram is affixed to detect the user's interaction (’045 Patent, col. 4:11-19). This design avoids the need to place sensors alongside the hologram, thereby reducing the device's overall size, weight, and complexity.
- Technical Importance: The invention's focus on component placement and sensor architecture aimed to make holographic interfaces more feasible for integration into a wider array of consumer and industrial electronics.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 4, and dependent claims 2, 11, and 17 (Compl. ¶¶80, 87, 90, 97, 100).
- Independent Claim 1 is a means-plus-function claim requiring:
- "hologram means" for generating a holographic image, where the hologram is affixed to a transparent or translucent material.
- "illumination means" for producing the holographic image.
- "actuation detection means" for detecting the operator's selection.
- "signal generation means" for providing an input signal to the device.
- A specific structural limitation that the "actuation detection means" is "positioned on a side of said hologram means opposite the operator."
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is Microsoft's HoloLens, described as a "holographic computer built into a wearable headset" (Compl. ¶24).
- Functionality and Market Context: The HoloLens uses "high-definition semitransparent holographic lenses" and a suite of sensors, including an inertial measurement unit, depth camera, and environment understanding cameras, to create an "immersive, interactive holographic experience" (Compl. ¶¶26, 27). User input is understood through gaze, voice commands, and hand gestures, most commonly an "air-tap" gesture for selections (Compl. ¶¶29-31). The complaint focuses on the HoloLens's ability to provide a "holographic keyboard interface" (the "TouchScreenKeyboard") that allows users to type text in applications by interacting with a projected keyboard (Compl. ¶34). The complaint includes a photograph purporting to show this holographic keyboard in operation. This photograph shows a holographic QWERTY keyboard floating in the user's field of view (Compl. ¶37, Figure 2).
IV. Analysis of Infringement Allegations
’238 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an image generator for generating a holographic image of at least the one tangible input object ... said image generator generating said holographic image of said one tangible input object such that it is larger than the one tangible input object of the tangible control mechanism; | Microsoft’s HoloLens allegedly contains an image generator, including see-through lenses and a Holographic Processing Unit, that generates a holographic image of a keyboard that is larger than a physical keyboard. | ¶¶45, 46, 52 | col. 7:10-19 |
| an actuation detector for determining selection by the operator of said holographic image of said one tangible input object; | The HoloLens allegedly includes an actuation detector, comprising its various sensors and HPU, to determine a user's selection of a holographic key via gestures. | ¶¶27, 28, 47 | col. 7:20-22 |
| a signal generator for receiving the determination of said actuation detector and providing an input signal to the device thereby to produce the response. | The HoloLens allegedly includes a signal generator that receives the detected gesture and provides a corresponding input signal to the device to produce the desired response. | ¶48 | col. 7:23-27 |
- Identified Points of Contention:
- Technical Question: The ’238 Patent discloses an "actuation detector" embodied as an optical matrix grid or a laser scanner (’238 Patent, col. 5:17-41). The infringement analysis may turn on whether the HoloLens's sophisticated gesture recognition system—which uses depth cameras, environment cameras, and an IMU to interpret an "air-tap"—performs the same function in substantially the same way to achieve the same result as the structures disclosed in the patent.
- Scope Question: A central question for claim construction may be how broadly the term "actuation detector" can be interpreted. The defense may argue it is limited to the optical grid or laser scanning embodiments described, while the plaintiff may argue it covers any technology that determines selection of a holographic image without physical contact.
’045 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| hologram means for generating a holographic image ... wherein said hologram means is affixed to at least one of a transparent material and a translucent material, and | The HoloLens is alleged to use "high-definition semitransparent holographic lenses" which constitute the hologram means affixed to a transparent material. | ¶¶26, 83, 86 | col. 10:35-37; 10:48-50 |
| the actuation detection means comprises emission/detection means ... being positioned on a side of said hologram means opposite the operator and being positioned to transmit and receive electromagnetic radiation toward the holographic image and through said material... | The complaint alleges HoloLens's sensors (e.g., depth camera) are positioned to detect user interaction, implying they meet the geometric requirements of being "opposite the operator" and looking "through" the lens. | ¶¶27, 86 | col. 10:51-59 |
- Identified Points of Contention:
- Technical Question: A critical factual question will be the precise physical architecture of the HoloLens. Infringement of the ’045 patent hinges on the geometric relationship between the user, the "hologram means" (the lenses), and the "actuation detection means" (the sensors). Evidence will be needed to establish the exact location of the HoloLens's depth-sensing cameras and other sensors relative to the user's eyes and the holographic lenses. The complaint provides a high-level component diagram showing "See-through lenses" and "Advanced sensors," but does not detail their spatial relationship (Compl. ¶45, Figure 3).
- Scope Question: The phrase "positioned on a side of said hologram means opposite the operator" will be a focal point of claim construction. For a wearable headset where the operator looks through the display, the parties may dispute what constitutes the "opposite side." Does it mean the world-facing side of the lens, or does it require a configuration more like the embodiments depicted in the patent?
V. Key Claim Terms for Construction
The Term: "actuation detector" (’238 Patent, Claim 1)
- Context and Importance: This term's scope is central to the infringement analysis for the ’238 Patent. The patent’s embodiments describe specific 1990s-era technologies like optical grids and laser scanners. The accused HoloLens uses a modern, complex system of cameras and processors for gesture recognition. Practitioners may focus on this term because the case may depend on whether this term is construed broadly enough to read on the significantly different technology of the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular technology, only a function: "determining selection by the operator" (’238 Patent, col. 7:20-22). The summary of the invention states detection can occur through "electromagnetic radiation or sound energy" (’238 Patent, col. 2:25-27), suggesting a non-limiting scope.
- Evidence for a Narrower Interpretation: The detailed description primarily discloses two specific embodiments: an "optical detection matrix" with photoemitters and photoreceptors (’238 Patent, col. 5:17-33) and a "laser scanning device" (’238 Patent, col. 5:36-41). A defendant could argue these embodiments define the scope of the term.
The Term: "positioned on a side of said hologram means opposite the operator" (’045 Patent, Claim 1)
- Context and Importance: This phrase captures the core inventive concept of the ’045 Patent—a more compact HMI achieved by repositioning the sensors. Infringement will be a direct function of how this geometric limitation is construed and applied to the physical structure of the HoloLens headset.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "opposite" is not explicitly defined. A plaintiff might argue that in the context of a headset, the side of the lens facing away from the user's eye is definitionally "opposite the operator."
- Evidence for a Narrower Interpretation: The patent's First Embodiment explains the concept as "positioning detecting sensors behind the hologram in relation to the operator, so as to permit those sensors to 'look through' the medium" (’045 Patent, col. 4:11-15). Figures and descriptions may suggest an arrangement where the operator, interaction point, and sensor are in a relatively straight line through the holographic medium, a configuration that may be disputed in the context of a headset where sensors may be positioned off-axis.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, it lays a potential foundation by alleging that Microsoft "provides application developers the necessary source code that allows developers' third-party applications to utilize a holographic keyboard" (Compl. ¶36), which could suggest active inducement.
- Willful Infringement: The complaint explicitly alleges willful infringement for both patents (Compl. ¶¶78, 105). The allegations are based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge from as early as September 2006 communications and, more specifically, from an October 2013 Microsoft patent application that allegedly cited the patents-in-suit as prior art (Compl. ¶¶39, 40). It further alleges direct notice through licensing inquiries in 2015 and 2016 (Compl. ¶41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological evolution: Can the term "actuation detector," as claimed in the ’238 Patent and described with mid-1990s optical grid and laser scanning technology, be construed to cover the sophisticated, multi-sensor, processor-driven gesture recognition system of the modern HoloLens? The outcome may depend on whether the court finds a fundamental mismatch in technical operation or views the newer technology as an equivalent.
- A second central issue will be one of geometric interpretation: Does the physical layout of the HoloLens headset satisfy the ’045 Patent’s requirement that sensors be "positioned on a side of said hologram means opposite the operator"? This question combines claim construction with a detailed factual analysis of the accused device's hardware, where the very definition of "opposite" in the context of a wearable, see-through display will be a primary point of contention.
- Finally, a key evidentiary question for damages will be willfulness: The complaint alleges specific instances of pre-suit knowledge, including Microsoft's own patent prosecution citing the asserted patents. The strength of this evidence, if proven, will be a significant factor in any potential damages enhancement.