VDPP LLC v. Fujifilm Healthcare America Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: VDPP, LLC (Oregon)
  • Defendant: Fujifilm Healthcare Americas Corporation (New York)
  • Plaintiff’s Counsel: David J. Hoffman
• Case Identification: 1:25-cv-00680, S.D.N.Y., 01/23/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant 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 systems and services for image capture and modification infringe two patents related to generating modified video images and using electronically controlled spectacles to create 3D visual effects.
• Technical Context: The patents-in-suit relate to methods for processing 2D video to create stereoscopic 3D illusions and the hardware, specifically multi-layered variable tint spectacles, used to view these effects.
• Key Procedural History: The complaint states that Plaintiff is a non-practicing entity and that its predecessors-in-interest have previously entered into settlement licenses related to its patent portfolio. Notably, an Ex Parte Reexamination Certificate for U.S. Patent No. 9,699,444 was issued on December 11, 2024, canceling claims 26-27. The complaint, filed after the issuance of this certificate, asserts claims 1-27 of this patent, which includes the canceled claims.

Case Timeline

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

U.S. Patent No. 9,699,444 - "Faster state transitioning for continuous adjustable 3deeps filter spectacles using multi-layered variable tint materials"

The Invention Explained

• Problem Addressed: The patent’s background section identifies the problem of "slow transition time" in electronically controlled variable tint spectacles used for 3D viewing, which can fail to keep pace with rapid on-screen motion changes. It also notes that some optoelectronic materials may have a limited "cycle life," or number of times they can switch between clear and dark states before failing. (’444 Patent, col. 2:28-32, 61-63).
• The Patented Solution: The invention proposes using spectacles with lenses fabricated from "multiple layers of optoelectronic materials" to achieve faster transition times between different optical densities than a single-layer lens would permit. The use of multiple layers allows a target optical density to be achieved with a shorter application of electric potential. (’444 Patent, col. 2:52-60; Fig. 6b).
• Technical Importance: This multi-layer approach was intended to improve the performance and responsiveness of active shutter glasses used for creating 3D effects, making the viewing experience smoother and more synchronized with on-screen action. (’444 Patent, col. 2:48-52).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 26, among others (Compl. ¶8). However, claims 26 and 27 were canceled by the U.S. Patent and Trademark Office via a Reexamination Certificate issued prior to the filing of the complaint (’444 Patent, C1 Certificate). The remaining asserted independent claim is Claim 1.
• Essential elements of Claim 1 (Apparatus):
  • An apparatus for generating a modified image frame, comprising a storage and a processor.
  • The processor is adapted to obtain a first image frame from a video stream.
  • The processor expands the first image frame to generate a modified image frame.
  • The processor generates a "bridge frame" that is of a non-solid color and different from both the first and modified image frames.
  • The processor blends the modified image frame with the bridge frame to generate a blended modified image frame.
  • The processor displays the blended modified image frame.
• The complaint asserts claims 1-27, which would include dependent claims. (Compl. ¶8).

U.S. Patent No. 9,716,874 - "Continuous Adjustable 3Deeps Filter Spectacles for Optimized 3Deeps Stereoscopic Viewing, Control Method and Means therefore, and System and Method of Generating and Displaying a Modified Video"

The Invention Explained

• Problem Addressed: The patent describes creating 3D visual effects from standard 2D motion pictures by leveraging the "Pulfrich illusion," where a time delay in visual information reaching one eye causes the brain to perceive depth in moving objects. The technical problem is how to dynamically control this effect by adjusting the optical properties of viewing spectacles in response to on-screen motion and ambient light conditions. (’874 Patent, col. 4:1-24).
• The Patented Solution: The invention discloses a system and method that analyzes a source video to obtain motion vectors from an image frame. It then calculates parameters such as the "lateral speed" and "direction of motion" and uses them in an algorithm to generate a "deformation value." This value is applied to the image frame to create a modified, blended frame that is then displayed, thereby optimizing the 3D illusion for the viewer. (’874 Patent, Abstract; col. 46:3-23).
• Technical Importance: This technology sought to automate the creation of a dynamic 3D experience from conventional 2D video content, adapting the visual effect in real-time without requiring specially filmed 3D source material. (’874 Patent, col. 46:50-61).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶13).
• Essential elements of Claim 1 (Method):
  • A method for generating and displaying modified video.
  • Acquiring a source video comprising a sequence of image frames.
  • Obtaining a first image frame from the source video.
  • Generating a modified image frame by performing at least one of three specific actions: (i) expanding the frame, (ii) removing a portion of the frame, or (iii) stitching the frame with a portion of a second frame.
  • Generating a first "altered image frame" that includes first and second non-overlapping portions derived from the modified and first image frames.
  • Generating a second "altered image frame" that includes third and fourth non-overlapping portions derived from the modified and first image frames.
• The complaint asserts claims 1-4, which would include dependent claims. (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products by name. It broadly accuses Defendant’s "systems, products, and services in the field of image image capture, streaming, modification and displaying" (’444 Patent allegations) and "image capture and modification" (’874 Patent allegations). (Compl. ¶¶8, 13).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the technical functionality of any accused instrumentality. It alleges at a high level that Defendant "maintains, operates, and administers" systems that perform the infringing functions and "put the inventions claimed... into service." (Compl. ¶¶8, 13). No specific allegations regarding the products' commercial importance or market positioning are provided beyond the general assertion that Defendant sells products and services in the judicial district. (Compl. ¶2).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement but refers to preliminary exemplary tables in Exhibits B and D, which were not provided. As such, a detailed claim chart summary cannot be constructed. The infringement theory must be inferred from the general allegations in the complaint body.

’444 Patent Infringement Allegations

• The complaint alleges that Defendant's systems and services constitute the apparatus of Claim 1 by performing functions related to capturing, modifying, and displaying images. (Compl. ¶¶7-8). The theory appears to be that Defendant’s technology performs the claimed steps of obtaining an image frame, expanding it, generating a "bridge frame," blending the frames, and displaying the result. (Compl. ¶8).

’874 Patent Infringement Allegations

• The complaint alleges that Defendant's systems and services practice the method of Claim 1. The narrative description in the complaint alleges that the '874 patent is directed to a method to "capture and store image frames... modify captured image frames, blend modified image frames based on an identified bridge frame, and generate a combined frame for display." (Compl. ¶12). The infringement theory is that Defendant's image capture and modification products perform these claimed method steps. (Compl. ¶13).

Identified Points of Contention

• Pleading Sufficiency: A foundational question for the court may be whether the complaint's high-level allegations, which do not identify specific accused products or map their features to claim elements, are sufficient to state a plausible claim for relief under prevailing federal pleading standards.
• Assertion of Canceled Claims: The complaint's assertion of claims 26-27 of the ’444 Patent raises a critical legal question, as an Ex Parte Reexamination Certificate issued prior to the complaint's filing canceled these claims. This may be subject to a motion to strike or other dispositive motion.
• Technical Mismatch: A potential point of contention may be whether the general "image capture and modification" functions attributed to Defendant's products perform the specific steps of "expanding," "removing a portion," "stitching," and generating "altered image frames" as required by the asserted claims, or if there is a fundamental mismatch in technical operation.

V. Key Claim Terms for Construction

Patent: ’444 Patent (Claim 1)

• The Term: "bridge frame"
• Context and Importance: This term defines an intermediate frame with specific properties ("non-solid color" and "different from" the other frames) that is central to the claimed blending process. The construction of this term will be critical to determining whether any transitional effect or intermediate frame generated by an accused system meets this claim limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the "bridge frame" more generally as a "third visual interval or bridging picture that is substantially dissimilar to the other" image pictures, which could support a construction covering various types of transitional frames. (’444 Patent, col. 4:37-40).
  • Evidence for a Narrower Interpretation: The claim requires a "non-solid color," but the specification describes a preferred embodiment where the bridging picture "is preferably a solid black or other solid-colored picture." (’444 Patent, col. 4:45-46). A party might argue this creates ambiguity, although claim language typically governs over contradictory statements in the specification.

Patent: ’874 Patent (Claim 1)

• The Term: "generating a modified image frame by performing one of: (i) expanding the first image frame; (ii) removing a first portion of the first image frame; (iii) stitching together the first image frame with a second portion of a second image frame"
• Context and Importance: This Markush group recites the specific technical actions that define the core inventive step of modification. Infringement requires performing at least one of these enumerated actions. The dispute will likely center on whether general-purpose image processing functions like digital zoom, cropping, or compositing fall within the patent's specific definitions.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain meaning of terms like "expanding," "removing a portion," and "stitching" could be argued to encompass a wide range of common digital image manipulation techniques.
  • Evidence for a Narrower Interpretation: A defendant may argue that these terms should be interpreted in the context of the specification’s detailed discussion of creating "Eternalisms" and specific blending effects for 3D viewing, potentially limiting their scope to these specific applications rather than any generic image editing function. (’874 Patent, col. 44:46-51).

VI. Other Allegations

Indirect Infringement

• The complaint alleges that Defendant introduces products into the stream of commerce "knowing that they would be sold" in certain districts. (Compl. ¶2). This is a bare allegation of knowledge and does not plead specific facts to support a claim for either induced or contributory infringement.

Willful Infringement

• The prayer for relief requests a declaration of willful infringement and treble damages. (Compl., p. 7, ¶e). The body of the complaint, however, does not plead any specific facts to support this claim, such as allegations of pre-suit knowledge of the patents or egregious conduct.

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

This case appears to be in its earliest stages, and its trajectory will likely be shaped by the resolution of several fundamental questions.

• A central threshold issue will be one of pleading sufficiency: does the complaint, which identifies no specific accused products and provides no claim charts or detailed infringement theories, allege sufficient factual matter to state a plausible claim for infringement?
• A key legal question for the ’444 Patent will be the viability of the asserted claims: what is the legal effect of the complaint's assertion of claims 26-27, which were canceled in a pre-suit reexamination proceeding?
• A core technical question will concern definitional scope: can the patent claims, which describe specific methods of generating "blended" and "altered" image frames for creating 3D effects, be construed to read on the general image capture and modification functionalities of Defendant’s systems, or is there a fundamental mismatch in the described technology and its alleged application?