Sony Corp v. Visual Effect Innovations LLC

1. Case Identification

• Case #: IPR2018-00773
• Patent #: 8,864,304
• Filed: March 13, 2018
• Petitioner(s): Sony Corporation
• Patent Owner(s): Visual Effect Innovations, LLC
• Challenged Claims: 1, 2, 4, 6, 7, and 9

2. Patent Overview

• Title: Continuous Adjustable 3DEEPS Filter Spectacles for Optimized 3DEEPS Stereoscopic Viewing and its Control Method and Means
• Brief Description: The ’304 patent discloses spectacles for viewing 2-D motion pictures with a 3-D visual effect. The spectacles use lenses made of "optoelectronic material" that allows the light transmission of each lens to be independently changed between a clear state and a dark state in response to an applied voltage.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 4, 6, 7, and 9 under §102(b) over Lazzaro

• Prior Art Relied Upon: Lazzaro (Patent 5,821,989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Lazzaro discloses every element of the challenged claims. Lazzaro teaches stereoscopic 3-D shutter glasses with a frame, left and right electro-optical shutter panels (lenses) that switch between a "transparent state" (light state) and an "opaque state" (dark state), and an "electronic circuit board" (control unit) housed within the frame's ear-engaging portions. Lazzaro’s control unit uses separate left and right "shutter-state control signals" to independently control the state of each lens, thereby satisfying the independent control limitations of claims 1 and 9.
  • Key Aspects: Lazzaro also explicitly teaches modes where the control unit drives the left lens to a light state while the right is dark (claim 6a), the left lens dark while the right is light (claim 6b), and both lenses simultaneously to a dark state (claims 2, 7, and 9h). Further, Lazzaro's lenses, comprising liquid crystal material between coated glass plates, were argued to meet the "plurality of layers of optoelectronic material" limitation of claim 4.

Ground 2: Obviousness of Claims 1, 2, and 9 under §103 over Edwards in view of Lazzaro or Suga

• 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, the primary reference, teaches 3-D glasses with left and right lenses that alternate between "transmissive" and "opaque" states. Edwards explicitly discloses that its control device controls the lenses in an "independent manner" using separate drive signals. While Edwards teaches all core functional aspects, it does not explicitly show the lenses and control unit housed within a physical spectacle frame.
  • Motivation to Combine: A POSITA would combine Edwards's system with the explicit teachings of a spectacle frame and a frame-housed control unit from either Lazzaro or Suga. All three references are in the same field of 3-D shutter glasses. The combination would be a predictable and necessary step to create a practical, self-contained, wearable product from Edwards's disclosed system, driven by known design incentives.
  • Expectation of Success: Integrating a control circuit into the frame of a pair of glasses was a conventional and well-understood practice in the art, as shown by Lazzaro and Suga. Therefore, a POSITA would have a high expectation of success in making this simple mechanical and electrical combination.

Ground 3: Obviousness of Claims 1, 2, 4, 6, 7, and 9 under §103 over Kuma in view of Lazzaro or Suga

• Prior Art Relied Upon: Kuma (Japanese Publication 2000-4451), Lazzaro (Patent 5,821,989), and Suga (Japanese Publication H7-287191).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Kuma, the primary reference, discloses a "glasses mechanism" with left and right eye shutters that can be independently controlled to be in a "light-blocking state" (dark) or a "transmitting state" (light). Kuma's control unit ("drive part 24") is shown separately but is described as capable of being "built into...the glasses mechanism." Kuma suggests the mechanism can be integrated into "ordinary glasses" but does not explicitly show a frame housing the control unit.
  • Motivation to Combine: A POSITA would be motivated to incorporate Kuma's glasses mechanism and control unit into a frame as taught by Lazzaro or Suga. This combination would fulfill Kuma's own suggestion of creating "ordinary glasses" and would result in a commercially desirable, self-contained device. The motivation is to combine known components for their intended purpose to achieve a predictable result.
  • Expectation of Success: As with the Edwards combination, housing Kuma's disclosed control unit within a frame from Lazzaro or Suga would be a straightforward implementation for a POSITA, yielding predictable results with a high likelihood of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 4, 6, and 7 over Lazzaro in view of Black (Patent 5,184,156) and against all challenged claims over Kuma in view of Black. These grounds argued that if the primary references were found to lack a "plurality of layers of optoelectronic material," a POSITA would have been motivated to incorporate the multi-layered, color-switching lenses of Black to add functionality.

4. Key Claim Construction Positions

• "dark state," "light state," and "clear state": Petitioner argued that, based on the Patent Owner's assertions in co-pending litigation, the broadest reasonable interpretation of these terms should encompass the "opaque state" and "transparent state" of conventional LCD shutter lenses.
• "control the state of the each of the lenses independently": Relying on the Patent Owner's litigation positions and the patent's specification, Petitioner proposed this phrase be construed to mean causing each lens to assume a dark or light level in response to separate electronic signals.
• "optoelectronic material": Petitioner proposed a construction of "a material capable of changing the transmission of light within an electronic device having optic and electric inputs," but noted that the Board should at least adopt the Patent Owner's broader litigation construction of "material that changes the transmission of light in response to a difference in electronic potential."

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 6, 7, and 9 of the ’304 patent as unpatentable.