NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TOMITA TECHNOLOGIES USA, LLC, AND
TOMITA TECHNOLOGIES INTERNATIONAL, INC.,
Plaintiffs-Appellees,
v.
NINTENDO CO., LTD. AND
NINTENDO OF AMERICA, INC.,
Defendants-Appellants.
______________________
2014-1244
______________________
Appeal from the United States District Court for the
Southern District of New York in No. 1:11-CV-04256,
Judge Jed S. Rakoff.
______________________
Decided: December 8, 2014
______________________
KENNETH L. STEIN, Stroock & Stroock & Lavan LLP,
of New York, New York, argued for plaintiffs-appellees.
With him on the brief were JOSEPH DIAMANTE and IAN G.
DIBERNARDO.
STEVEN S. ROSENTHAL, Kaye Scholer LLP, of Wash-
ington, DC, argued for defendants-appellants. With him
2 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
on the brief were PAUL I. MARGULIES; JAMES S. BLANK and
SCOTT G. LINDVALL, of New York, New York.
______________________
Before PROST, Chief Judge, BRYSON and HUGHES, Circuit
Judges.
PROST, Chief Judge.
Nintendo Co., Ltd. and Nintendo of America, Inc.
(“Nintendo”) appeal from a final judgment of the U.S.
District Court for the Southern District of New York, in
which a jury found that Nintendo infringed claim 1 of
U.S. Patent No. 7,417,664 (“’664 patent”). The jury fur-
ther found that the infringed claim was not invalid and
awarded damages to plaintiffs-appellees Tomita Technol-
ogies USA, LLC and Tomita Technologies International,
Inc. (“Tomita”).
For the reasons that follow, we affirm the district
court’s denial of a motion for judgment as a matter of law
(“JMOL”) on the infringement of the “cross-point measur-
ing means” claim element and the validity of the asserted
claim. We also affirm the district court’s denial of Nin-
tendo’s motion for a new trial based on jury instructions
relating to “cross-point,” “cross-point information,” and
“cross-point measuring means.” However, we reverse the
district court’s construction of the “offset presetting
means” claim element. We remand for further proceed-
ings to determine whether the accused instrumentalities
infringe the ’664 patent under the correct claim construc-
tion.
BACKGROUND
I. Patent
A three-dimensional or 3D movie is typically captured
with two cameras providing slightly different images
known as stereoscopic images. A viewer perceives a 3D
effect when each eye separately views a stereoscopic
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 3
image intended for that eye. The strength of the 3D effect
varies with the viewing conditions. For example, stretch-
ing the images to fit a display that is too large may cause
viewer discomfort. The ’664 patent aims to address
problems relating to the strength of the 3D effect, which
the patent refers to as stereoscopic feelings. ’664 patent
col. 2 ll. 11–24, col. 2 l. 65–col. 3 l. 2.
The ’664 patent describes the adjustment of stereo-
scopic feelings during playback by initially recording the
“cross-point information” at the same time the cameras
capture the stereoscopic images. Id. at col. 2 ll. 1–6. The
cross-point is where the optical axes of the two stereoscop-
ic cameras intersect. Id. at col. 1 ll. 27–31. In turn, an
“offset presetting means” uses “cross-point information”
and conditions relating to the playback to provide viewers
with the appropriate stereoscopic feelings. Id. at col. 9 ll.
3–10. Specifically, the ’664 patent describes circuit com-
ponents adjusting the relative timing between the left-eye
and right-eye video images “to provide optimal stereoscop-
ic feeling.” Id. at col. 10 ll. 16–20. The ’664 patent ex-
plains that adjusting the relative timing between the left-
eye and right-eye video images shifts their relative posi-
tions when they are displayed. Id. at col. 11 ll. 26–59.
II. District Court Proceedings
Tomita accuses Nintendo’s 3DS gaming system along
with its camera application and augmented reality (“AR”)
game card application of infringing the ’664 patent. The
3DS has a 3D-capable top display, 3D-capable outer
cameras and a “3D Depth Slider” to adjust the depth of
3D images.
The district court construed both “offset presetting
means” and “cross-point measuring means” as means-
plus-function elements and adopted Tomita’s proposed
constructions. On March 13, 2013, the jury returned a
verdict for Tomita finding that the 3DS infringed claim 1
of the patent and that claim 1 is not invalid. On April 11,
4 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
2013, Nintendo filed a motion for JMOL or a new trial on
liability, which the district court denied on August 14,
2013.
Nintendo now appeals the denial of its post-trial mo-
tion for JMOL or a new trial. This court has jurisdiction
under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Claim Construction
Claim construction is a question of law that we review
de novo. Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., 744 F.3d 1272, 1276–77 (Fed. Cir. 2014) (en
banc).
The district court construed the function of “offset
presetting means” as “offsetting and displaying said
different video images based upon said video image in-
formation, said cross-point information and information
on the size of the image which is displayed by said stereo-
scopic video image display device.” Tomita Techs. USA,
LLC v. Nintendo Co., Ltd., 855 F. Supp. 2d 33, 42
(S.D.N.Y. 2012). The district court then adopted Tomita’s
proposal for the corresponding structure, which is:
The structure is comprised of a circuit and a man-
ual entry unit that sets the offset between the
right and left eye images. The ’664 patent de-
scribes various embodiments of this structure in
Figures One and Two, which identify it as number
106, Figures Two and Three, which refer to man-
ual entry of information, Figures Four through
Eight, and at 3:24–29, 3:39–44, 4:14–19, 4:63–67,
5:21–24; 5:35–37, 5:63–67, 9:3–10, 11:12–12:52,
15:50–67, 16:9–10, 16:15–16, 17:58–63, 18:6–11,
18:49–54, 19:31–35, 19:56–59, and 20:3–5. The
structure also includes equivalents of the struc-
tures described above.
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 5
J.A. 96–97.
The only dispute here is the identification in the spec-
ification of the structure of “offset presetting means”
corresponding to the claim function under 35 U.S.C.
§ 112(f). Our review is not an easy task. Tomita’s pro-
posed construction says that “various embodiments” of the
structure can be found in lengthy citations to the specifi-
cation. It is unclear what the structure is for a particular
embodiment and where in the specification that structure
is described. At oral argument, Tomita clarified that its
theory of the corresponding structure is box 106 in Figure
2 working in the manner described in Figures 7 and 8.
Oral Arg. 20:50–21:32, available at http://www.cafc.
uscourts.gov/oral-argument-recordings/14-1244/all.
According to Tomita, the corresponding structure shown
in Figures 2, 7 and 8 is any “simple circuit” that performs
the claim function. Tomita concedes, however, that
Figure 3 also shows a corresponding structure for “offset
presetting means.” Id. at 27:49–28:39. To reconcile these
two sets of corresponding structures, Tomita contends
that they are alternative embodiments.
We first resolve the question of whether the ’664 pa-
tent discloses multiple embodiments of “offset presetting
means” recited in claim 1. The descriptions of Figures 1
to 3 repeatedly refer to “the present embodiment” in
explaining how the different aspects relate to one anoth-
er. ’664 patent col. 8 ll. 7–9, 25, 31, 37, 43, 56, col. 9 ll.
11–16. Figures 4 to 8 are further listed as “view[s] show-
ing how the stereoscopic image is viewed by a viewer.”
See id. at col. 7 ll. 23–32. These figures collectively de-
scribe the purported invention without any suggestion of
different embodiments of “offset presetting means.” See
id. at col. 7 l. 56–col. 10 l. 45, col. 11 l. 12–col. 12 l. 52.
Tomita quotes nothing from the descriptions of Figures 2
and 3 that identify those figures as contemplating multi-
ple embodiments of the purported invention.
6 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
Instead, Tomita infers “plainly different embodi-
ments” because Figure 3 and its descriptions fail to identi-
fy explicitly the components that correspond to box 106 of
Figure 2. Appellees’ Br. 55–56. This inference fails upon
review of the descriptions of Figures 2 and 3. The de-
scriptions of Figure 2 introduce a larger circuit comprising
the “offset presetting means” among other compo-
nents. ’664 patent col. 8 l. 60–col. 9 l. 10. The details of
this larger circuit “of the present embodiment” are “shown
in FIG. 3.” Id. at col. 9 ll. 11–16. The ’664 patent is clear
that Figures 2 and 3 refer to the same embodiment of a
larger circuit that comprises the “offset presetting
means.” Within that same larger circuit referred to in
Figures 2 and 3, there is necessarily only a single embod-
iment of the “offset presetting means.”
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 7
We address next Tomita’s contention that Figures 2,
7, and 8 describe the corresponding structure for “offset
presetting means.” The descriptions of Figure 2 introduce
a larger circuit comprising the “offset presetting means”
and paraphrase the claim language for the same. See id.
at col. 8 l. 60–col. 9 l. 10 (“The stereoscopic video image
signal generating circuit 101 comprises . . . offset preset-
ting means for presetting a [sic] offset value . . . .”).
However, repeating or paraphrasing means-plus-function
claim language in the specification alone does not describe
any structure. See Ergo Licensing, LLC v. CareFusion
303, Inc., 673 F.3d 1361, 1363–64 (Fed. Cir. 2012) (“The
recitation of ‘control device’ provides no more structure
than the term ‘control means’ itself, rather it merely
replaces the word ‘means’ with the generic term ‘device.’”).
Without disclosing any structure of “offset presetting
means,” the descriptions of Figure 2 fail to provide the
corresponding structure for the claim element.
Figures 7, 8 and their descriptions also do not disclose
sufficient structural details. The specification uses Fig-
ures 7 and 8 to describe “the amount of the offset of the
8 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
right-eye and left-eye video images.” Id. at col. 12 ll. 15–
16. Calculating the amount of offset provides only func-
tional information for “offsetting” but not its structure.
Tomita concedes as much. Appellees’ Br. 53 (stating that
Figures 4, 7 and 8 describe “[t]he manner in which the
system determines the offset”). Even if Figures 7 and 8
were to disclose a structure for the “offsetting” aspect,
they do not provide the full structure required by the
claim function. The claim function recites “offsetting and
displaying.” The “displaying” aspect of the claim function
is not described at all in Figures 7, 8 and their descrip-
tions. Figures 7, 8 and their descriptions cannot provide
sufficient structure that performs the claim function. See
Noah Sys., Inc. v. Intuit Inc., 675 F. 3d 1302, 1314 (Fed.
Cir. 2012) (requiring that the corresponding structure
“address both aspects of this functional language”).
Figures 2, 7, 8 and their descriptions, in fact, do not
use “circuit” or any other structural terms in connection
with any discussion of “offset.” See ’664 patent col. 8 l.
54–col. 9 l. 10, col. 12 ll. 15–52. Tomita thus does not
quote from those descriptions to justify using the word
“circuit” in its proposed construction. Instead, Tomita
quotes the phrase “simple circuit” from the summary of
dependent claim 11. This “simple circuit,” in the proper
context, refers to:
said offset presetting means includes timing con-
trol means for controlling the timing of the read-
out of video image data from said frame memory
for left-eye video image and/or said frame memory
for right-eye video image; and said timing control
means presets the offset of said left-eye video im-
age and right-eye video image by advancing or de-
laying the timing of the read-out of the video
image data from one of said frame memories for
left-eye and right-eye video images relative to the
timing of the read-out of the video image data
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 9
from the other of said from memories for the left-
eye and right-eye video images.
Id. at col. 5 ll. 9–20. Tomita omits this detailed structure
entirely but quotes “simple circuit” out of context to
interpret “offset presetting means” as covering any circuit
that performs the claim function. Stripped of the struc-
ture in the specification, Tomita’s interpretation is no
more specific than defining “offset presetting means” in
purely functional terms. Such purely functional interpre-
tation is prohibited under 35 U.S.C. § 112(f). See Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1211 (Fed. Cir. 2003).
Tomita further contends that Figures 2, 7, 8 and their
descriptions show structure because its expert says so.
However, expert testimony cannot gloss over the total
absence of structure in the cited portion of the specifica-
tion. Cf. Default Proof Credit Card v. Home Depot USA,
412 F.3d 1291, 1302 (Fed. Cir. 2005) (“[T]he testimony of
one of ordinary skill in the art cannot supplant the total
absence of structure from the specification.”). The lack of
structure for “offset presetting means” in Figures 2, 7, 8
and their descriptions cannot be cured by the Tomita
expert’s conclusory statements to the contrary.
Finally, we identify the corresponding structure for
“offset presetting means.” The parties agree that Figure 3
and its descriptions contain the corresponding structure.
Oral Arg. at 27:49–28:39. In particular, “timing control
unit 32” in Figure 3 operates to “provide optimal stereo-
scopic feeling” based on “CP information 12” and “screen
size information” among others. Id. at col. 10 ll. 3–20.
“[T]iming control unit 32” thus performs the “offsetting”
portion of the claim function. Tomita, in fact, concedes
that in Figure 3, it would “identify primarily box 32” as
the “offset presetting means.” Oral Arg. 28:18–39. The
“displaying” portion of the claim function is performed by
“the switch control unit 41 preset[ting] the timing of
10 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
switching of the signal switch 40 for writing of video data
into synthesis frame memory 50.” ’664 patent col. 10 ll.
26–29.
Accordingly, we reverse the district court’s adoption of
Tomita’s proposed corresponding structure for “offset
presetting means.” The correct corresponding structure
should be: timing control unit 32, signal switch 40, switch
control unit 41, and synthesis frame memory 50 described
in Figure 3 and column 9 line 44 to column 10 line 29 and
equivalents thereof. 1
II. JMOL of Non-Infringement and Invalidity
We review a denial of a motion for judgment as a mat-
ter of law (“JMOL”) under regional circuit law. Lazare
Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d
1359, 1366 (Fed. Cir. 2010). The Second Circuit reviews a
denial of JMOL de novo. Whitserve, LLC v. Computer
Packages, Inc., 694 F.3d 10, 18 (Fed. Cir. 2012) (citing
AMW Materials Testing, Inc. v. Town of Babylon, 584 F.3d
436, 456 (2d Cir. 2009)). In the Second Circuit, a district
court may set aside the jury’s verdict and enter judgment
as a matter of law pursuant to Rule 50 only where there is
“such a complete absence of evidence supporting the
verdict . . . or there is such an overwhelming amount of
evidence in favor of the movant.” AMW Materials Testing,
1 We depart from Nintendo’s proposed construction
because it includes components that do not actually
perform the claim function. See Asyst Techs., Inc. v.
Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (“The
corresponding structure to a function set forth in a
means-plus-function limitation must actually perform the
recited function, not merely enable the pertinent struc-
ture to operate as intended . . . .”). We also decline to
adopt Tomita’s inclusion of a “manual entry unit” for the
same reason.
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 11
584 F.3d at 456. This requirement is similar to the sub-
stantial evidence standard. Whitserve, 694 F.3d at 18.
A. Non-infringement
1. “offset presetting means”
Nintendo argues that the judgment of infringement
should be reversed because Tomita has not proved that
the 3DS satisfies this claim element under the correct
construction. Tomita argues that if the district court’s
construction is reversed, Tomita should be given the
opportunity to show infringement under any new con-
struction of this claim element.
We have now construed this claim element. See supra
at 10–10. Because the jury was not presented with the
question whether the 3DS infringes the ’664 patent under
the correct construction, we remand for further proceed-
ings to determine whether the 3DS infringes “offset
presetting means.”
2. “cross-point measuring means”
Nintendo argues that the 3DS cannot satisfy the func-
tion of this claim element because of the following syllo-
gism: camera bodies arranged in parallel have parallel
optical axes that can never intersect to have a “cross-
point”; the camera bodies of the 3DS are arranged in
parallel; so, the 3DS has parallel optical axes that do not
have a “cross-point.” Nintendo thus insists that the 3DS
cannot measure “cross-point information.” Nintendo
contends instead that the accused software application
uses image processing, which cannot provide “cross-point
information.”
We cannot agree with Nintendo. The major premise
of Nintendo’s syllogism was disproved by Tomita’s sub-
mission of a 1993 technical paper. That paper shows
cameras arranged in parallel can have intersecting optical
axes under particular optical configurations. Indeed,
12 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
claim 8—dependent from claim 1—explicitly claims
cameras “disposed in a parallel relationship.” Parent
claim 1 cannot exclude the scope of dependent claim 8.
See 35 U.S.C. § 112(d) ([“A] claim in dependent form shall
contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter
claimed.”). Claim 1 thus cannot be read to exclude cam-
eras that are arranged in parallel. What is important is
that the optical axes of the accused cameras intersect, and
Tomita presented a theory of how that is so which the
jury apparently credited.
Moreover, Nintendo does not dispute that Tomita pre-
sented evidence to support the allegation that the “focus
value” in the 3DS satisfies “cross-point information.”
Instead, Nintendo argues that Tomita failed to prove
certain factual issues under Nintendo’s own interpreta-
tion. See, e.g., Reply Br. 12 (“Tomita provides no evidence
showing how the ‘focus value’ . . . is used to determine any
distance relating to a cross-point of optical axes, as op-
posed to the convergence of displayed images.”). Failure
to abide by Nintendo’s own interpretation of facts does not
mean that there was a complete absence of evidence
supporting the verdict.
Nintendo next contends that the 3DS does not satisfy
the “cross-point measuring means” because the 3DS does
not have the corresponding structure that uses any of the
three techniques purportedly required by the district
court’s construction. Instead, Tomita’s infringement
theory was based on a fourth technique “based upon the
position of picking up of an object.” Nintendo contends
that this “fourth technique” was outside of the district
court’s construction. Nintendo also disputes that the 3DS
uses this “fourth technique” because “the 3DS does not
recognize objects in images.” Appellants’ Br. 44-47.
Nintendo is mistaken. The district court’s construc-
tion includes the description in column 3 lines 50–67 of
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 13
the ’664 patent. 2 This cited portion of the specification
mentions “said cross-point measuring means calculates
the cross-point based upon the position of picking-up of an
object.” ’664 patent col. 3 ll. 64–66. Calculating the cross-
point “based upon the position of picking up of an object”
is what Nintendo refers to as the “fourth technique” and it
is included in the district court’s construction. Moreover,
Nintendo does not rebut Tomita’s citation of evidence—
including source code documentation, patent application,
and Tomita’s expert testimony—used to show that the
3DS measures “focus value” based on objects in the scene
thus allegedly satisfying the technique of “calculat[ing]
the cross-point based upon the position of picking-up of an
object.”
Accordingly, we conclude that the jury’s finding that
the 3DS satisfies the “cross-point measuring means” was
supported by substantial evidence. We therefore affirm
the district court’s denial of JMOL on the infringement of
“cross-point measuring means.”
B. Invalidity
Nintendo contends that the ’664 patent lacks enable-
ment “[t]o the extent claim 1 includes a device with cam-
eras having parallel optical axes” and lacks adequate
written description “[t]o the extent claim 1 of the ’664
patent is construed to cover pick-up means having paral-
lel optical axes as in the 3DS.” Appellants’ Br. 54–59.
These invalidity contentions are the reverse of Nin-
tendo’s non-infringement theory based on “cross-point
measuring means,” namely that the cameras of the 3DS
have parallel optical axes that can never intersect to have
a “cross-point.” See supra at 11. Reasoning in reverse,
2 Nintendo does not appeal the construction of
“cross-point measuring means.” We thus assume this
construction without passing judgment on its correctness.
14 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
Nintendo infers that finding the 3DS to infringe requires
interpreting claim 1 to encompass cameras with parallel
optical axes. This is not what Tomita presented in its
infringement theory. Instead, as discussed above in
section II.A.2, Tomita contended that although the cam-
eras of the 3DS are disposed in parallel, they have inter-
secting optical axes.
Nintendo has not shown that the infringement verdict
must have rested on an incorrect assumption by the jury
that claim 1 encompasses cameras with parallel optical
axes thus rending the claim invalid. Accordingly, the
district court did not err in denying Nintendo’s JMOL
motion with respect to invalidity.
III. Motion for a New Trial
We review a denial of a motion for a new trial under
regional circuit law. Lazare Kaplan, 628 F.3d at 1366.
The Second Circuit reviews the denial of a motion for new
trial for abuse of discretion. Id. (citing SEC v. DiBella,
587 F.3d 553, 563 (2d Cir. 2009)). In the Second Circuit,
“[a] motion for a new trial ordinarily should not be grant-
ed unless the trial court is convinced that the jury has
reached a seriously erroneous result or that the verdict is
a miscarriage of justice.” Armstrong v. Brookdale Univ.
Hosp. & Med. Ctr., 425 F.3d 126, 133 (2d Cir. 2005).
Nintendo argues that a new trial is warranted be-
cause the district court failed to properly instruct the jury
on claim construction. Specifically, Nintendo complains
that the improper jury instruction allowed Tomita to
prove infringement that departs from the district court’s
claim construction of “cross-point measuring means.”
Nintendo’s contentions are again misplaced. The dis-
trict court’s instructions made clear to the jury that it is
not free to apply its own reading of disputed terms to the
facts of the case. The district court is not required to use
rigid, legal language to instruct the jury. The district
TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD. 15
court has the discretion to determine “the particular form
and precise nature of jury instructions.” Sulzer Textil AG
v. PICANOL NV, 358 F.3d 1356, 1366 (Fed. Cir. 2004).
Moreover, we have previously disposed of Nintendo’s
argument that Tomita departed from the district court’s
claim construction of “cross-point measuring means” in
section II.A.2. See supra at 11–13. Nintendo has thus
failed to establish prejudice flowing from the alleged error
in the district court’s jury instructions.
Finally, Nintendo argues that a new trial is warrant-
ed because the district court declined to construe “cross-
point,” allowing Tomita to confuse the jury by conflating
the claim terms “cross-point” and “cross-point infor-
mation” with “offset.”
We are not persuaded. The ’664 patent is clear in its
use of “cross-point” and further equates it with “conver-
gence point.” ’664 patent at col. 1 l. 28. At least “conver-
gence point” had an ordinary meaning to a skilled person.
See J.A. 9601. Tomita’s discussions of “cross-point” did
not differ with how it was used in the ’664 patent. Moreo-
ver, Nintendo fails to rebut Tomita’s response that it
distinguished the two offsets allegedly determined by the
3DS—one corresponding to focus value and “cross-point
information,” and the other one corresponding to the
“offset” for displaying in the ’664 patent. Compare Appel-
lees’ Br. 65–66 with Reply Br. 29–33 (focusing on Tomita’s
alleged departure from the district court’s construction of
“cross-point measuring means”).
Nintendo has failed to show that the district court
abused its discretion in denying Nintendo’s motion for a
new trial. Accordingly, we affirm the district court’s
denial of Nintendo’s motion for a new trial based on jury
instructions relating to “cross-point,” “cross-point infor-
mation” and “cross-point measuring means.”
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART AND REMANDED
16 TOMITA TECHNOLOGIES USA, LLC v. NINTENDO CO., LTD.
COSTS
Each party shall bear its own costs.