MasterImage 3D, Inc. v. RealD Inc.

1. Case Identification

• Patent #: Patent 7857455
• Filed: March 12, 2015
• Petitioner(s): MasterImage 3D, Inc. and MasterImage 3D Asia, LLC
• Patent Owner(s): RealD, Inc.
• Challenged Claims: 1-4, 7-23

2. Patent Overview

• Title: Combining P And S Rays For Bright Stereoscopic Projection
• Brief Description: The ’455 patent discloses a stereoscopic 3D projection system designed to increase image brightness. The system uses a polarizing splitting element to separate image light into a primary path and a secondary path based on polarization, rotates the polarization of one path to match the other, and then uses one or more polarization modulators to create the stereoscopic effect before superimposing the light from both paths onto a screen.

3. Grounds for Unpatentability

Ground 1: Obviousness over Svardal and Bierhuizen - Claims 1-4, 7, 8, 10-14, and 16-22 are obvious over Svardal in view of Bierhuizen.

• Prior Art Relied Upon: Svardal (Patent 6,547,396) and Bierhuizen (Patent 6,839,095).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Svardal disclosed all the key components of a stereoscopic projection system but in two different primary embodiments. Svardal’s Figure 6 showed an external stereoscopic adaptor with a variable retarder (a polarization modulator) placed after the projection lens, suitable for use with a DMD projector. However, this configuration would suffer a 50% light loss. Svardal’s Figure 3 taught a method of "polarization recovery" using a Polarization Conversion Assembly (PCA) to avoid this light loss, but showed it before the image engine. Bierhuizen, which shared an inventor and assignee with Svardal, was cited to explicitly disclose the well-known components of a PCA: a polarizing beam splitter (PBS), a half-wave retarder, and a reflector. Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to implement the polarization recovery technique taught in Svardal's Figure 3 into the system of Svardal's Figure 6, using the known PCA components detailed in Bierhuizen. This combination would result in the system claimed in the '455 patent.
  • Motivation to Combine: A POSITA would combine the references to increase the image brightness of the stereoscopic projection system. Svardal itself identified the problem of light loss and taught polarization recovery as the solution. It would have been obvious to apply this taught solution to Svardal’s Figure 6 embodiment, particularly when using a DMD projector which produces randomly polarized light, to avoid the inherent and undesirable 50% light intensity loss.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying a known technique (polarization recovery) to solve a known problem (low brightness) using standard, predictable optical components. Petitioner argued there was no meaningful technical difference between performing polarization recovery on light before image formation (Svardal, Fig. 3) versus after image formation (the proposed combination), as the optical principles are identical.

Ground 2: Obviousness over Svardal, Bierhuizen, and AAPA - Claims 9, 15, and 23 are obvious over Svardal in view of Bierhuizen and Applicant Admitted Prior Art.

• Prior Art Relied Upon: Svardal (Patent 6,547,396), Bierhuizen (Patent 6,839,095), and Applicant Admitted Prior Art (AAPA) from the ’455 patent specification, which describes ZScreen technology (from Lipton, Patent 4,792,850) and dual-projector systems.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address claims requiring specific features. Claims 9 and 15 required a "push-pull modulator" with "two pi-cells." Petitioner argued that Svardal's linear polarization system was known to cause crosstalk when a viewer tilts their head. The AAPA explicitly taught that a ZScreen modulator (a known "push-pull modulator" using pi-cells and circular polarization) solved this exact problem. Therefore, a POSITA would have found it obvious to substitute Svardal’s linear variable retarder with the ZScreen from the AAPA. For claim 23, which required a "second projector," Petitioner pointed to the AAPA's disclosure that dual-projector systems were a well-known method for increasing brightness, especially for large auditoriums.
  • Motivation to Combine: The motivation to add the AAPA was twofold. First, a POSITA would be motivated to improve the Svardal system by reducing crosstalk, a known problem with a known solution provided by the ZScreen technology in the AAPA. Second, a POSITA would be motivated to further increase image brightness for certain applications by employing a second projector, a standard technique also described in the AAPA.
  • Expectation of Success: Success was expected because it involved the simple substitution of one known type of polarization modulator for another to achieve a predictable benefit (reduced crosstalk) and the duplication of a system to achieve another known benefit (increased brightness).

4. Key Claim Construction Positions

• "uniformly modulate": Petitioner proposed this term be construed as "any transformation in polarization state resulting from polarization modulation is applied equally to all portions of the incoming light." This construction was argued to be critical because the distinguishing feature that led to allowance during prosecution was the "uniform" modulation, which the applicant had used to differentiate from prior art that allegedly performed pixel-level modulation.
• "polarizing splitting element": Proposed as "a device that creates primary path and secondary path beams of light energy by directing light of one polarization state along a first path and light of another polarization state along a second path." This construction was central to mapping the function of the PBS within the PCA of Svardal/Bierhuizen to the claims.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention was that there is no patentable distinction between performing polarization recovery on illumination light before it passes through an image engine (as shown in Svardal's Fig. 3) and performing it on image-bearing light after it exits a projection lens (as claimed in the ’455 patent). Petitioner asserted this was a "distinction without a difference," as the optical properties of the unpolarized light and the function of the recovery optics are the same in both scenarios.

6. Arguments Regarding Discretionary Denial

• The petition argued that the grounds presented were distinguishable from those in two prior IPRs filed by the same Petitioner against the ’455 patent (IPR2015-00033 and IPR2015-00035). It was argued that the primary references in those other petitions (Silverstein, Schuck, and Kim) were §102(e) or §102(a) prior art, giving the Patent Owner an opportunity to antedate them. In contrast, the current petition relied on Svardal and Bierhuizen, which were undisputed §102(b) prior art that could not be antedated. Furthermore, it was argued that Svardal and Bierhuizen provided a more direct and compelling combination rationale.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 7-23 of the ’455 patent as unpatentable.