A Manhattan federal jury recently ordered Nintendo Co. Ltd. to pay Tomita Technologies International, Inc. (“Tomita”) over $30 million in damages in a patent infringement case that concerned certain 3D technologies. Tomita, which originally filed the claim against Nintendo back in June of 2011, claimed that Nintendo’s 3DS hand-held video game system (which launched in March of 2011) infringed on Tomita’s patent called “Stereoscopic image picking up and display system based upon optical axes cross-point information” (also known as the ‘664 patent), which is technology that shows 3D images that can be viewed without the use of special 3D glasses.
More specifically, the complaint alleged that Nintendo’s infringement of the ‘664 patent “has been, and continues to be willful;” however, the complaint did not outline exactly how the 3DS gaming system infringed the patent.
Patent holder and inventor, Seijiro Tomita, worked for Sony for just about 30 years until 2002. He applied for the patent at issue in March of 2003, and the patent was issued in August of 2008 and licensed to Tomita Technologies, the plaintiff in the lawsuit. Apparently, before the issuance of the patent, however, Tomita had met with certain Nintendo representatives back in August of 2003 to show them the technology.
Shortly after his presentation to the Nintendo reps, Tomita was asked to provide a sample of the technology to the company. Despite his request for a licensing agreement or payment, Tomita never got a response from Nintendo, and he noted in his case filings that he had “no direct communications with Nintendo from September 2003 until 2011 when the lawsuit was filed.”
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The Bottom-Line Order of 2011
The New York court took oral arguments back in November of 2011 regarding how to construe various terms noted in the claims of the patent. A little over a month later, the Court issued a bottom-line order that construed the relevant terms, and Judge Jed Rakoff issued a memorandum in February of 2012 that explained the reasons for the order.
The parties asked the court to construe 10 different claim terms of the patent. Judge Rakoff noted that, with regard to interpreting the words in a claim, courts are to “interpret a word in a claim according to its ordinary and customary meaning.” The terms at issue were:
- “Video image pick-up means”
- “Stereoscopic video image pick-up device…for outputting video information from said pick up means”
- “Cross-point information”
- “Optical axes”
- “Cross-point measuring means for measuring CP information on the cross-point of optical axes of said pick-up means”
- “Offset presetting means for offsetting and displaying said different video images based upon said video image information, said cross-point information and information on the size of the image which is displayed by said stereoscopic video image display device”
- “Calculates the cross-point based upon the position of picking-up of an object in said two pick-up means”
- “Disposed in a parallel relationship”
- “Stereoscopic feeling”
The Court found that six of the above-mentioned terms did not require construction, as their meanings were already clear as used and stated within the patent; however, Judge Rakoff did construe terms number four, six, seven, and eight in greater detail, rejecting Nintendo’s construction of those terms. Accordingly, Judge Rakoff reaffirmed the claim constructions as stated in the December 2011 order.
What Happened to Get the Parties to This Point in 2013?
Despite the bottom-line order, Nintendo did not give up its fight. In fact, in February of 2012, the company filed two motions for summary judgment without a trial on the basis that Tomita was unable to prove that Nintendo either infringed or willfully infringed the patent. However, in April 2012, Judge Rakoff denied Nintendo’s motions, stating that based on clear and convincing evidence (which was the standard used in this case), a reasonable jury could determine that Nintendo’s defenses were “unpersuasive that an objectively high likelihood of infringement in fact exists.”
Judge Rakoff also made a point of mentioning the fact that the same Nintendo employees (four of them, in particular) who were in attendance during Tomita’s demonstration also participated in and headed up the development project related to the 3DS gaming system, and a “reasonable jury could find that they would have understood the similarities between the 3DS and the prototype Mr. Tomita had shown them.”
Tomita’s attorneys maintained their argument that Nintendo used the technology in the 3DS; however, Nintendo’s attorneys argued that the gaming system does not use key aspects of Tomita’s patent, namely the cross point information needed to display 3D images on various screens. Tomita’s attorneys sought $9.80 of every 3DS sold, while Nintendo’s attorneys claim the company had several meetings before and after they saw Tomita, all of which were for different kinds of 3D display technology.
Nintendo has made it clear that it is confident that the verdict will be set aside and that it will not impact its continued sales of that gaming system or any of its other systems, software and accessories. Given the fact that Nintendo is a multi-billion dollar company, they’re probably right about the lawsuit’s effect on continued sales–but that remains to be seen.