Sony Corp v. Visual Effect Innovations LLC

1. Case Identification

• Case #: IPR2018-00772
• Patent #: 9,167,235
• Filed: March 13, 2018
• Petitioner(s): Sony Corporation
• Patent Owner(s): Visual Effect Innovations, LLC
• Challenged Claims: 1-3 and 5

2. Patent Overview

• Title: Faster State Transitioning for Continuous Adjustable 3Deeps Filter Spectacles Using Multi-Layered Variable Tint Materials
• Brief Description: The ’235 patent is directed to electrically controlled spectacles designed to create a 3-D visual effect from a 2-D motion picture. The technology centers on spectacles with optoelectronic lenses that can rapidly change their light transmission properties—switching between a "clear state" and a "darkened state"—in response to an applied voltage.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 5 are anticipated by [Lazzaro](https://ai-lab.exparte.com/case/ptab/IPR2018-00772/doc/1005) under pre-AIA 35 U.S.C. §102(b).

• Prior Art Relied Upon: Lazzaro (Patent 5,821,989)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lazzaro discloses every element of the challenged claims. Lazzaro teaches an electrically controlled, wireless 3-D viewing system comprising glasses with a frame, electro-optical shutter lenses, and a control unit housed within the frame's ear-engaging portions. The lenses are described as having a plurality of states (transparent/light and opaque/dark) and are independently controlled by the housed control unit via separate signals. Lazzaro also discloses a mode where both lenses are driven to an opaque state (meeting claim 3) and describes the lenses as constructed from multiple layers of optoelectronic material, including liquid crystal material between coated glass plates (meeting claim 5).

Ground 2: Claims 1-3 are obvious over [Edwards](https://ai-lab.exparte.com/case/ptab/IPR2018-00772/doc/1006) in view of Lazzaro or [Suga](https://ai-lab.exparte.com/case/ptab/IPR2018-00772/doc/1009).

• Prior Art Relied Upon: Edwards (Patent 5,717,412), Lazzaro (Patent 5,821,989), and Suga (Japanese Publication H7-287191).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Edwards discloses the core of the invention: 3-D glasses with optoelectronic lenses that are independently controlled to alternate between an opaque (dark) state and a transmissive (light) state for viewing video. Edwards further teaches a control circuit that can place both lenses in a dark state. However, Edwards does not explicitly show the lenses housed in a frame or the control unit housed within that frame.
  • Motivation to Combine: A POSITA would combine the lens system of Edwards with the explicit teachings of a spectacle frame and housed control unit from Lazzaro or Suga. Both Lazzaro and Suga teach self-contained 3-D glasses with on-board control circuitry. The motivation would be the predictable advantage of creating an integrated, wearable device rather than one with a remote, separate controller, which was a known design incentive in the field.
  • Expectation of Success: A POSITA would have a high expectation of success, as this combination merely integrates known components (shutter lenses, frames, controllers) for their established purposes to achieve a predictable result.

Ground 3: Claims 1-3 and 5 are obvious over [Kuma](https://ai-lab.exparte.com/case/ptab/IPR2018-00772/doc/1007) in view of [Black](https://ai-lab.exparte.com/case/ptab/IPR2018-00772/doc/1011).

• Prior Art Relied Upon: Kuma (Japanese Publication 2000-4451) and Black (Patent 5,184,156).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Kuma teaches a stereoscopic image display system with glasses having independently controlled left and right shutters that switch between light-blocking and transmitting states. Kuma suggests its control unit ("drive part") can be built into the glasses mechanism. For the limitation in claim 5 ("plurality of layers of optoelectronic material"), Petitioner argued that while Kuma's disclosure might be considered lacking, Black explicitly teaches this element.
  • Motivation to Combine: A POSITA would be motivated to combine Kuma's system with Black's teachings. Black discloses glasses with an explicitly housed control unit (driver unit and electronic circuit) within the frame ("rim 100") and describes multi-layered lenses (two liquid-crystal layers sandwiched between alignment and conductive layers). A POSITA would incorporate Black's more robust, explicitly housed controller and multi-layer lens structure into Kuma's system to yield the predictable result of a more advanced, self-contained unit.
  • Expectation of Success: Combining a housed controller and multi-layer lens structure with a basic shutter glass system was a straightforward design choice for a POSITA, yielding predictable improvements in functionality and integration.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1, 2, 3, and 5 are obvious over Kuma combined with Lazzaro or Suga, and claim 5 is obvious over Lazzaro combined with Black. These grounds relied on similar rationales for combining known elements like frames, housed controllers, and multi-layer lenses from the secondary references.

4. Key Claim Construction Positions

• "plurality of states," "dark state," and "light state": Petitioner argued that, consistent with the Patent Owner's positions in related litigation, the broadest reasonable interpretation of "plurality of states" must include at least a "dark state" and a "light state." Further, "dark state" should be construed to mean an "opaque state" and "light state" to mean a "transparent state," as these terms are used in the prior art for LCD shutter lenses.
• "control the state of the each of the lenses independently": Citing the Patent Owner's assertions in parallel litigation, Petitioner contended this phrase should be construed to mean "cause each lens to take a dark or light level according to separate electronic signals." This construction was central to mapping the functionality of prior art control circuits to the claims.
• "optoelectronic material": For claim 5, Petitioner proposed this term be construed as a "material capable of changing the transmission of light within an electronic device having optic and electric inputs." This construction, supported by technical dictionaries, was argued to be consistent with how a POSITA would understand the term.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d). The primary reason asserted was that the key prior art references forming the basis of the petition's grounds (Lazzaro, Edwards, Kuma, and Black) were not substantively considered or applied by the Examiner during the original prosecution of the ’235 patent, even if some were listed on its face.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 and 5 of Patent 9,167,235 as unpatentable.