VDPP LLC v. STMicroelectronics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: VDPP IP, LLC (Oregon)
  • Defendant: STMicroelectronics, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 7:24-cv-00188, W.D. Tex., 08/02/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a "regular and established place of business" in the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s systems, products, and services for motion picture presentation infringe a patent related to methods for modifying video images.
• Technical Context: The technology at issue involves digital video processing techniques to alter or create new image frames, potentially for creating specific visual effects or illusions of motion.
• Key Procedural History: Plaintiff identifies itself as a non-practicing entity and states that it and its predecessors have entered into prior settlement licenses, none of which, it alleges, involved the production of a patented article that would trigger marking requirements under 35 U.S.C. § 287.

Case Timeline

Date	Event
2001-01-23	'380 Patent Priority Date
2018-07-10	'380 Patent Issue Date
2024-08-02	Complaint Filing Date

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

U.S. Patent No. 10,021,380 - "Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials," issued July 10, 2018

The Invention Explained

• Problem Addressed: The patent describes a problem in visual media where discrete image frames can fail to create a convincing illusion of continuous, sustained motion. It also discusses the limitations of conventional 3D viewing technologies, such as those relying on the "Pulfrich illusion" or shutter glasses, which can have drawbacks related to ambient light or synchronization ('380 Patent, col. 22:20-53).
• The Patented Solution: While the patent's title and portions of the specification describe electronically controlled spectacles, the asserted claims focus on a method of video processing. The invention, as claimed, involves acquiring a sequence of video frames and then creating new, "modified" frames by "expanding" or altering existing ones. These original and modified frames are then combined and displayed to create a new visual output, which the specification suggests can produce an illusion of "continuous, sustained and direct presentational movement" ('380 Patent, col. 8:50-9:10). This effect is referred to in the specification as "Eternalism" ('380 Patent, col. 46:1-13).
• Technical Importance: The described methods provide a way to create novel visual effects and manipulate the perception of motion directly within the video data stream, potentially independent of the display or viewing hardware.

Key Claims at a Glance

• The complaint asserts infringement of one or more of claims 1-30 (Compl. ¶8). Independent claim 1 is a method claim.
• Independent Claim 1 recites a method with the essential elements of:
  • Acquiring a source video comprising a sequence of image frames, including a first image frame and a second image frame in chronological positions.
  • Expanding the first image frame to generate a first modified image frame that is different from the first image frame.
  • Expanding the second image frame to generate a second modified image frame that is different from the second image frame.
  • Combining the first modified image frame and the second modified image frame to generate a combined image frame.
  • Displaying the combined image frame.

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products, methods, or services by name (Compl. ¶8).

Functionality and Market Context

The accused instrumentalities are broadly defined as "systems, products, and services in the field of motion pictures presentation" (Compl. ¶8). The complaint alleges that these unspecified systems are maintained, operated, and administered by the Defendant and that they perform the patented inventions (Compl. ¶8). No further technical details regarding the functionality or market context of any specific product are provided. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-chart analysis. It references a "preliminary exemplary table attached as Exhibit B" (Compl. ¶9), but this exhibit was not included with the filed complaint. The pleading contains only broad, conclusory allegations of infringement without identifying which features of which products allegedly meet the limitations of the asserted claims (Compl. ¶8).

• Identified Points of Contention:
  • Evidentiary Questions: A threshold question for the court will be whether the complaint's allegations are sufficient to proceed without identifying any specific accused instrumentality. Discovery will focus on identifying the accused systems and what evidence, if any, demonstrates that they perform the claimed methods of "expanding" and "combining" video frames.
  • Technical Questions: Assuming a product is identified, a key technical question will be whether its video processing functions operate in the manner required by the claims. For instance, what evidence will show that an accused system "expand[s]" an image frame to generate a "modified" frame and then "combin[es]" it with another as specifically recited in the claims?

V. Key Claim Terms for Construction

• The Term: "expanding the first image frame to generate a first modified image frame"
• Context and Importance: This term recites a core manipulative step of the claimed method. The construction of "expanding" will be critical in determining the scope of the invention—whether it covers any process that alters a frame or is limited to specific techniques disclosed in the patent. Practitioners may focus on this term because its plain meaning is ambiguous in the context of digital image processing, and its definition will likely determine whether a wide or narrow range of video technologies infringe.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim itself only requires that the generated "modified image frame is different from the first image frame," suggesting any modification could suffice ('380 Patent, col. 112:59-62).
  • Evidence for a Narrower Interpretation: The specification extensively describes using "bridging pictures" to create an illusion of continuous motion ('380 Patent, col. 47:61-48:19). A defendant may argue that "expanding" should be construed more narrowly in light of these embodiments, limiting the term to the creation of frames that serve this specific "Eternalism" function, rather than any generic video effect.

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation that may support a claim for induced infringement, stating "Defendant's acts complained of herein caused those claimed-invention embodiments as a whole to perform" (Compl. ¶8). However, it does not plead specific facts, such as the existence of user manuals or instructions, to support the knowledge and intent elements of such a claim.
• Willful Infringement: The complaint requests a declaration that infringement was willful and seeks treble damages in its prayer for relief (Compl., Prayer for Relief ¶e). The body of the complaint, however, does not contain factual allegations to support a claim of willfulness, such as alleging that Defendant had pre-suit knowledge of the '380 Patent.

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

• A primary issue will be one of factual specificity: given the complaint's failure to identify a single accused product, a threshold question will be whether Plaintiff can produce evidence of infringement by any of Defendant's specific "systems, products, and services" that practice the claimed methods of video modification.
• The case will likely turn on a question of claim scope: can the term "expanding... an image frame," as used in the claims, be broadly interpreted to cover a wide array of video processing techniques, or will the court limit its meaning to the specific methods for creating the "Eternalism" visual effect detailed in the patent's specification?
• A third key question relates to damages and marking: Plaintiff has proactively argued that as a non-practicing entity with only non-practicing licensees, its recovery is not limited by the patent marking statute. The court may need to resolve whether Plaintiff's prior settlement agreements constitute licenses that would require marking by a licensee to preserve the right to pre-suit damages.