VDPP LLC v. NEC Corp Of America

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: VDPP, LLC (Oregon)
  • Defendant: NEC CORPORATION OF AMERICA (Texas)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 3:24-cv-00566, N.D. Tex., 03/07/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant’s corporate headquarters is located within the district and it conducts regular and established business there.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services for the motion picture industry infringe two patents related to electrically controlled spectacles that use variable-tint lenses to create a 3D visual effect.
• Technical Context: The technology at issue involves active shutter glasses that manipulate the optical properties of each lens to generate a stereoscopic 3D illusion, known as the Pulfrich effect, from 2D video content.
• Key Procedural History: The patents-in-suit descend from a long chain of continuation applications. Notably, a request for ex parte reexamination of the ’452 Patent was filed shortly after the complaint. The resulting Reexamination Certificate, set to issue in April 2025, confirms the patentability of asserted claims 2 and 4, which could strengthen Plaintiff's position regarding the validity of those specific claims. The complaint's prayer for relief contains a reference to a U.S. Patent No. 9,948,793, which appears to be a typographical error, as the body of the complaint asserts infringement of U.S. Patent Nos. 9,426,452 and 9,948,922.

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`" (Issued Aug. 23, 2016)

The Invention Explained

• Problem Addressed: The patent identifies the problem of slow transition times in electronically controlled variable tint materials, such as those used in 3D spectacles. When such materials are used to create 3D effects synchronized to a movie, they may be too slow to keep up with rapid on-screen events like scene changes. The patent also notes that the limited 'cycle life' (the number of clear-dark cycles before failure) of some optoelectronic materials is another technical challenge (’452 Patent, col. 2:25-55).
• The Patented Solution: The invention proposes using two or more layers of variable tint material to construct each lens of the spectacles. By using multiple layers, a desired level of darkness can be achieved more quickly, as each layer only needs to undergo a partial transition. This approach is also intended to increase the operational lifespan of the lenses. (’452 Patent, col. 2:49-60; Fig. 6a-6b).
• Technical Importance: This multi-layer approach sought to improve the performance and responsiveness of active shutter glasses, aiming to create a more seamless and convincing 3D viewing experience that could be better synchronized with high-framerate digital video (’452 Patent, col. 2:32-39).

Key Claims at a Glance

• The complaint asserts claims 1-4 of the ’452 patent (Compl. ¶13). Independent claim 1 is directed to an apparatus.
• Essential elements of Claim 1:
  • An electrically controlled spectacle, comprising: a spectacle frame;
  • optoelectronic lenses housed in the frame, the lenses comprising a left lens and a right lens, each of the optoelectrical lenses having a plurality of states, wherein the state of the left lens is independent of the state of the right lens; and
  • a control unit housed in the frame, the control unit being adapted to control the state of each of the lenses independently.

U.S. Patent No. 9,948,922, "`Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials`" (Issued Apr. 17, 2018)

The Invention Explained

• Problem Addressed: As a continuation of the same family as the ’452 patent, the ’922 patent addresses the same core problem: the need for a system that can generate a 3D effect from 2D movies by dynamically adjusting lens filters, which requires overcoming the slow transition times of available materials (’922 Patent, col. 3:23-40).
• The Patented Solution: While sharing the same technological background, the ’922 patent claims a specific method for processing a 2D video to create a 3D effect. The method involves analyzing motion vectors within a video frame, calculating parameters like lateral speed and direction, and using those parameters along with a viewer's inter-ocular distance to generate a "deformation value" that modifies the image. This differs from the ’452 patent, which claims the spectacle apparatus itself. (’922 Patent, Claim 1).
• Technical Importance: This invention describes a method for computationally generating the necessary modifications to a 2D video stream to enable a 3D viewing experience with active shutter glasses, moving beyond simply controlling the glasses to defining the video processing itself (’922 Patent, col. 5:2-6:11).

Key Claims at a Glance

• The complaint asserts claims 1-4 of the ’922 patent (Compl. ¶20). Independent claim 1 is directed to a method.
• Essential elements of Claim 1:
  • A method for generating modified video, comprising: obtaining a source video comprised of a sequence of 2D image frames;
  • determining an image frame from the source video that includes two or more motion vectors;
  • calculating a single parameter for (a) a lateral speed of the image frame and (b) a direction of motion of the image frame, using the motion vectors;
  • generating a deformation value by applying an algorithm that uses an inter-ocular distance and both of the calculated parameters; and
  • applying the deformation value to the image frame to identify a modified image frame.

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused product, method, or service by name. It broadly refers to "systems, products, and services in the field of motion pictures" and systems related to "an electrically controlled spectacle frame and optoelectronmic lenses" (Compl. ¶13, ¶15, ¶20, ¶22).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality or market context. It alleges in a conclusory manner that Defendant "maintains, operates, and administers" infringing systems (Compl. ¶13, ¶20).

IV. Analysis of Infringement Allegations

The complaint references preliminary infringement tables in Exhibits B and D, but these exhibits were not filed with the complaint, precluding a detailed, element-by-element claim chart analysis. The narrative theory of infringement is summarized below.

No probative visual evidence provided in complaint.

• ’452 Patent Infringement Theory: The complaint alleges that Defendant directly infringes by using systems that embody the claimed invention (Compl. ¶13). The infringement theory appears to be that Defendant uses, operates, or provides systems that include electrically controlled spectacles with independently controllable left and right optoelectronic lenses and a control unit housed in the frame, thereby practicing the apparatus claimed in claim 1.
• ’922 Patent Infringement Theory: The complaint alleges that Defendant infringes by maintaining and operating systems and services that practice the claimed methods (Compl. ¶20). The theory suggests that Defendant's systems perform the steps of the claimed video processing method: analyzing motion vectors from 2D video, calculating speed and direction, generating a "deformation value," and applying it to modify the video frames for 3D viewing.
• Identified Points of Contention:
  • Pleading Sufficiency: A primary point of contention will likely be the complaint's lack of specificity. The failure to identify any accused product may raise the question of whether the complaint meets the plausibility pleading standards established by Federal Circuit precedent.
  • Technical Questions (’922 Patent): A key factual question is whether any of Defendant's systems actually perform the specific video processing steps recited in claim 1 of the ’922 patent. The complaint offers no evidence that Defendant’s technology calculates a "deformation value" based on the claimed inputs of "lateral speed," "direction of motion," and "inter-ocular distance."

V. Key Claim Terms for Construction

’452 Patent - "control unit housed in the frame" (Claim 1)

• Context and Importance: The physical location of the "control unit" is a critical limitation. Infringement may turn on whether the logic for controlling the lenses is self-contained within the spectacle frame or is executed by an external device (e.g., a set-top box, computer, or server), with the spectacles acting only as a receiver.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's block diagrams depict the "Control Unit" (103) as a functional module that receives external signals (110) and outputs control signals to the lenses (’452 Patent, Fig. 3). A party could argue this term covers the final-stage processing circuitry physically on the glasses, even if higher-level commands originate elsewhere.
  • Evidence for a Narrower Interpretation: The abstract states the spectacle includes "a control unit housed in the frame," and the figures consistently show the control unit (103) as a component physically located on the spectacle frame (101) (’452 Patent, Abstract; Fig. 1). This may support an interpretation requiring the primary control logic to be physically contained within the eyewear.

’922 Patent - "deformation value" (Claim 1)

• Context and Importance: This term appears central to the claimed method but is not explicitly defined in the patent. The outcome of the infringement analysis for the ’922 patent will depend heavily on how this term is construed, or if it is found to be indefinite.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent explains the goal of modifying a 2D image to create a 3D effect based on motion and the Pulfrich illusion (’922 Patent, col. 5:2-6:11). A plaintiff may argue that any numerical value derived from the claimed inputs (speed, direction, inter-ocular distance) and used to algorithmically alter the image frame for this purpose constitutes a "deformation value."
  • Evidence for a Narrower Interpretation: The specification does not provide a specific mathematical formula or algorithm for calculating the "deformation value." A defendant may argue that the absence of such detail, combined with the lack of a clear definition, renders the term indefinite under 35 U.S.C. § 112, as it may not provide a person of ordinary skill with reasonable certainty about the scope of the claimed method.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement and contributory infringement for both patents, stating Defendant "actively encouraged or instructed others (e.g., its customers...)" to use the infringing systems (Compl. ¶15-16, 22-23). These allegations are conclusory and are not supported by specific factual assertions, such as references to user manuals or advertising materials.
• Willful Infringement: The complaint alleges willfulness based on Defendant’s knowledge of the patents "from at least the filing date of the lawsuit" (Compl. ¶15-16, 22-23). This alleges post-suit willfulness, and the prayer for relief seeks treble damages (Compl., Prayer for Relief ¶e).

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

1. Pleading Sufficiency and Specificity: A central threshold issue will be one of procedural sufficiency: does the complaint, which fails to identify any specific accused NEC product and relies on generalized infringement allegations, state a plausible claim for relief, or is it vulnerable to an early motion to dismiss?
2. Claim Construction and Validity: A key substantive question for the ’922 patent will be one of claim scope: can the term "deformation value," which is critical to the asserted method claim but not explicitly defined in the specification, be construed with sufficient clarity to support an infringement analysis, or is it invalid as indefinite?
3. Locus of Infringement: For the ’452 patent, a core factual question will be the architecture of the accused system: once an instrumentality is identified, does it incorporate a "control unit housed in the frame" as required by the apparatus claim, or are the control functions sufficiently distributed to an external device to fall outside the claim's scope?