SCIENCE APPLICATIONS INTERNATIONAL CORP. v. USA

Filing 426

REPORTED OPINION (reissued for publication of 422 **SEALED** MEMORANDUM AND ORDER DENYING in part 352 Plaintiff SAIC's Motion to Strike Untimely Non-Infringing Alternatives and Non-Infringement Theories, solely as it pertains to Micro soft's non-infringement theory; GRANTING 377 Defendants' Joint Motion to Strike the Declaration of SAIC's Infringement Expert, Dr. Bajaj, Expressing New Infringement Opinions; DENYING 339 Intervenor-Defendant Microsof t Corporation's Motion for Summary Judgment of Invalidity Based on Indefiniteness; DENYING 342 Defendant the United States and Third-Party Defendant L3 Technologies, Inc.'s Joint Motion for Summary Judgment of Invalidity Based on I ndefiniteness; GRANTING 343 Intervenor-Defendant Microsoft Corporation's Motion for Summary Judgment of Non-Infringement; DENYING 341 Third-Party Defendant L3 Technologies, Inc.'s Motion for Summary Judgment of Non-Infring ement; DENYING 340 Plaintiff SAIC's Motion for Partial Summary Judgment of Infringement by the Government; and DENYING as MOOT 340 Plaintiff SAIC's Motion for Summary Judgment regarding the Desert's Edge Prior Art Status). Signed by Judge Eleni M. Roumel. (cj) Service on parties made.

In the United States Court of Federal Claims
SCIENCE APPLICATIONS
INTERNATIONAL CORPORATION,
Plaintiff,
v.
THE UNITED STATES,
Defendant,
and
MICROSOFT CORPORATION,

No. 17-cv-825
Filed Under Seal: February 14, 2024
Publication: February 29, 2024 1

Intervenor-Defendant,
and
L3 TECHNOLOGIES, INC.,
Third-Party Defendant.

DeAnna D. Allen and Stephen R. Smith of Cooley LLP, Washington, D.C.; Joseph Van Tassel of
Cooley LLP, Reston, V.A.; and William D. Belanger of Troutman Pepper LLP, Boston, M.A.
argued for Plaintiff. With them on the briefs were Orion Armon, Cooley LLP, Denver, C.O.; and
Gwendolyn Tawresey, Troutman Pepper LLP, Washington, D.C.
Matthew D. Tanner, United States Department of Justice, Civil Division, Washington, D.C. argued
for Defendant. With him on the briefs were Brian M. Boynton, Principal Deputy Assistant
Attorney General, Washington, D.C.; and Scott Bolden, Hayley A. Dunn, and Gary L. Hausken of
the United States Department of Justice, Civil Division, Washington, D.C.
Ahmed J. Davis and Thomas L. Halkowski of Fish & Richardson P.C., Washington, D.C. argued
for Intervenor-Defendant. With them on the briefs were W. Freeman, Jr., Daniel Y. Lee, and Laura
1

This Memorandum and Order was filed under seal, in accordance with the Protective Order
entered in this case (ECF No. 34) and was publicly reissued after incorporating all appropriate
redactions proposed by the parties (ECF No. 425-1). The two versions are substantively identical,
except for the publication date and this footnote.
1

C. Whitworth of Fish & Richardson P.C., Washington, D.C.; and John Thornburgh, Fish &
Richardson P.C., San Diego, C.A.
William C. Bergmann of Baker & Hostetler LLP, Washington, D.C. argued for Third-Party
Defendant. With him on the briefs were Charles C. Carson of Baker & Hostetler LLP,
Washington, D.C.; and Phillip D. Wolfe of Baker & Hostetler LLP, Philadelphia, P.A.
MEMORANDUM AND ORDER
I.

Introduction
On June 19, 2017, Plaintiff Science Applications International Corporation (SAIC) filed

the present action alleging literal patent infringement pursuant to 28 U.S.C. § 1498(a) against
Defendant the United States (the Government). Complaint (ECF No. 1) (Compl.) ¶¶ 1–3. SAIC
contends that the Government has infringed several of SAIC’s patents including “by entering into
contracts with Plaintiff’s competitors for the manufacture and subsequent use of night vision
goggle weapon systems with specialized heads up displays that allegedly use Plaintiff’s patented
technology.” Sci. Applications Int'l Corp. v. United States, 148 Fed. Cl. 268, 269 (2020); see
Compl. ¶¶ 2, 37. Though this case has persisted through six years of extensive litigation, and
involves staggeringly high contract values of over

, 2 at its heart rests cutting-edge

technology emblematic of American ingenuity and critical to the safety of military men and
women across the globe.
This Court has issued several opinions throughout the course of this litigation, familiarity
with which is presumed. 3 See, e.g., Sci. Applications Int'l Corp. v. United States, 135 Fed. Cl. 661
2

See Hearing Transcript, dated July 26, 2021 (ECF No. 191) at 8:7–17 (referencing
contract between the Government and Microsoft).

3

Since its inception in June 2017, this action has been reassigned four times to different judges.
See Sci. Applications Int’l Corp., 148 Fed. Cl. at 270; see also ECF No. 25 (Notice of
Reassignment, dated April 5, 2018); ECF No. 68 (Notice of Reassignment, dated June 21, 2019);
ECF No. 85 (Notice of Reassignment, dated July 23, 2019); ECF No. 113 (Notice of Reassignment
to undersigned judge, dated February 27, 2020).
2

(2018); Sci. Applications Int'l Corp. v. United States, 154 Fed. Cl. 594 (2021) (Markman Opinion
or Markman Op.); Sci. Applications Int'l Corp. v. United States, 156 Fed. Cl. 486 (2021); Sci.
Applications Int'l Corp. v. United States, 161 Fed. Cl. 373 (2022); Sci. Applications Int'l Corp. v.
United States, 162 Fed. Cl. 213 (2022); Sci. Applications Int’l Corp. v. United States, 163 Fed. Cl.
257 (2022).

The following seven motions are pending before this Court and are ripe for

adjudication:
•

Intervenor-Defendant Microsoft Corporation’s Motion for Summary Judgment of
Invalidity Based on Indefiniteness (ECF No. 339) (MSFT MSJ Inv.) 4;

•

Plaintiff SAIC’s Motion for Partial Summary Judgment of Infringement by the
Government and for Summary Judgment regarding the Desert's Edge Prior Art Status (ECF
No. 340) (SAIC MSJ Inf.) 5;

•

Third-Party Defendant L3 Technologies, Inc.’s Motion for Summary Judgment of NonInfringement (ECF No. 341) (L3 MSJ NI) 6;

•

Defendant the United States and Third-Party Defendant L3 Technologies, Inc.’s Joint
Motion for Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 342)
(L3/Gov. MSJ Inv.) 7;

4

See SAIC’s Opposition to Intervenor-Defendant Microsoft Corporation’s and the United States’
and Third-Party Defendant L3 Technologies, Inc.’s Motions for Summary Judgment of Invalidity
Based on Indefiniteness (ECF No. 364) (MSFT MSJ Inv. – SAIC Resp.); Intervenor-Defendant
Microsoft Corporation’s Reply in Support of its Motion for Summary Judgment of Invalidity
Based on Indefiniteness (ECF No. 374) (MSFT MSJ Inv. – MSFT Reply).

5

See Defendants’ Combined Opposition to SAIC’s Motions for Partial Summary Judgment of
Infringement by the Government and Prior Art Status of Desert’s Edge (ECF No. 359) (SAIC MSJ
Inf. – Def. Resp.); SAIC’s Reply to Defendants’ Combined Opposition to SAIC’s Motion for
Partial Summary Judgment of Infringement by the Government and Prior Art Status of Desert’s
Edge (ECF No. 372) (SAIC MSJ Inf. – SAIC Reply).
6

See SAIC’s Opposition to Third-Party Defendant L3 Technologies, Inc.’s Motion for Summary
Judgment of Non-Infringement (ECF No. 361) (L3 MSJ NI – SAIC Resp.); Third-Party Defendant
L3 Technologies, Inc.’s Reply in Support of L3’s Motion for Summary Judgment of NonInfringement (ECF No. 376) (L3 MSJ Inv. – L3 Reply).
7

See SAIC’s Opposition to Defendant the United States of America’s and Third-Party Defendant
L3 Technologies, Inc.’s Motion for Summary Judgment of Invalidity Based on Indefiniteness
(ECF No. 360) (L3/Gov. MSJ Inv. – SAIC Resp.); Defendant the United States’ and Third-Party
3

•

Intervenor-Defendant Microsoft Corporation’s Motion for Summary Judgment of NonInfringement (ECF No. 343) (MSFT MSJ NI) 8;

•

Plaintiff SAIC’s Motion to Strike Untimely Non-Infringing Alternatives and NonInfringement Theories (ECF No. 352) (SAIC MTS) 9;

•

All Defendants’ Joint Motion to Strike the Declaration of SAIC's Infringement Expert, Dr.
Bajaj, Expressing New Infringement Opinions (ECF No. 377) (Def. MTS). 10
Briefing of the above motions concluded on April 20, 2023. See Scheduling Order, dated

December 14, 2022 (ECF No. 333); Unopposed Motion for Extension of Time (ECF No. 378);
Minute Order, dated April 14, 2023 (granting unopposed Motion to extend briefing deadline to
April 20, 2023). The Court heard argument on these motions on June 22, 2023 (Oral Argument).
See Minute Order, dated April 27, 2023 (setting Oral Argument); Oral Argument Transcript, dated
June 22, 2023 (ECF No. 400) (OA Tr.). On September 28, 2023, the Court ruled on the pending
motions and certified a partial judgment pursuant to Rule 54(b). See ECF Nos. 401, 402.
Subsequently, the parties moved pursuant to Rules 59 and 60 to alter or amend the Court’s
September 28, 2023 Memorandum and Order and entry of partial judgment. See ECF Nos. 409

Defendant L3 Technologies, Inc.’s Reply in Support of Their Motion for Summary Judgment of
Invalidity Based on Indefiniteness (ECF No. 373) (L3/Gov. MSJ Inv. – L3/Gov. Reply).
8

See SAIC’s Opposition to Microsoft Corporation’s Motion for Summary Judgment of NonInfringement (ECF No. 362) (MSFT MSJ NI – SAIC Resp.); Intervenor-Defendant Microsoft
Corporation’s Reply in Support of Its Motion for Summary Judgment of Non-Infringement (ECF
No. 375) (MSFT MSJ NI – MSFT Reply).
9

See Defendants’ Opposition to SAIC’s Motion to Strike Non-Infringing Alternatives and NonInfringement Theories (ECF No. 367) (SAIC MTS – Def. Resp.); SAIC’s Reply in Support of its
Motion to Strike Untimely Non-Infringing Alternatives and Non-Infringement Theories (ECF No.
382) (SAIC MTS – SAIC Reply).
10

See SAIC’s Opposition to Defendants’ Motion to Strike the Declaration of SAIC’s Infringement
Expert, Dr. Bajaj, Expressing New Infringement Opinions (ECF No. 390) (Def. MTS – SAIC
Resp.); Reply in Support of Defendants’ Motion to Strike the Declaration of SAIC’s Infringement
Expert, Dr. Bajaj, Expressing New Infringement Opinions (ECF No. 391) (Def. MTS – Def.
Reply).
4

and 412. On February 13, 2024, this Court granted Plaintiff’s Rule 59 Motion, denied Defendants’
Rule 60 Cross-Motion, and accordingly ordered the Clerk of Court to (1) strike from the docket
the Court’s September 28, 2023 Memorandum and Order, and (2) vacate the Court’s entry of
partial judgment. See ECF No. 420. As a result, the above-listed seven motions are pending once
again.

The present Memorandum and Order addressing these now-pending motions is

substantively identical to the Court’s now-stricken September 28, 2023 opinion, excepting this
paragraph and Section V (Conclusion). A background summary pertinent to the pending motions
follows.
A.

Background
a.

The Alleged Infringing Parties

The Government has entered into several contractual arrangements with various parties to
develop and manufacture the accused technology. Specifically, on May 9, 2014, the Government,
acting by and through the Department of the Army (the Army), awarded two contracts for the
procurement of the Enhanced Night Vision Goggle-III (ENVG-III) and the Family of Weapon
Sights – Individual (FWS-I) to BAE Systems, Inc. (BAE) and DRS Networks & Imaging Systems,
LLC (DRS). Compl. ¶¶ 2, 37. Neither BAE nor DRS have joined this suit. Additionally, on
November 20, 2018, Intervenor-Defendant Microsoft Corporation (Microsoft) entered into a
contract with the Government to develop an
which includes implementation of the

,
feature relevant to SAIC’s

infringement claims. See Microsoft’s Unopposed Motion to Intervene Pursuant to Rule 24 (ECF
No. 59) at 1. 11 On April 30, 2019, Microsoft filed an unopposed Motion to Intervene in this action

11

Citations throughout this Memorandum and Order reference the ECF-assigned page numbers,
which do not always correspond to the pagination within the document.
5

under Rule 24 of the Rules of the United States Court of Federal Claims (Rules), which this Court
granted on May 6, 2019. See id.; Order, dated May 6, 2019 (ECF No. 60) (granting Microsoft’s
Motion to Intervene).
Similarly, on May 30, 2019, the Army entered into two separate other transaction
agreements (OTAs) with L3 Technologies, Inc. (L3) and Harris Corporation (Harris) to develop a
prototype for an Enhanced Night Vision Goggle-Binocular (ENVG-B) that also requires
implementation of the accused

. See Order, dated May 12, 2020 (ECF No. 120)

at 3. Defendant filed a Motion to Notify L3 and Harris as interested third parties pursuant to Rule
14(b) on March 10, 2020, which this Court granted on May 12, 2020. See Motion to Notify
Interested Party L3 Technologies, Inc. and Harris Corporation Pursuant to RCFC 14(b) (ECF No.
114); Order, dated May 12, 2020 (ECF No. 120) (granting Defendant’s Motion to Notify L3 and
Harris). Accordingly, Rule 14(b) notices were issued to L3 and Harris, care of Elbit Systems of
America, LLC (Elbit), 12 on May 12, 2020. See Notice to Third Parties (L3 Technologies, Inc. and
Harris Corporation) pursuant to Rule 14(b)(1) (ECF No. 122). On July 14, 2020, L3 filed its
Answer to SAIC’s Complaint, entering the case as a third-party defendant. L3 Technologies, Inc.
Answer (ECF No. 131). In contrast, Elbit filed a Notice with the Court declining to file any third-

12

Though the Government awarded Harris one of the May 30, 2019 OTAs, the division of Harris
responsible for developing the company’s night vision technology was spun-off and purchased by
Elbit Systems of America, LLC (Elbit), which is the U.S. subsidiary of Elbit Systems, Ltd. See
Order, dated May 12, 2020 (ECF No. 120) at 3 n.1. Accordingly, this Court references Elbit as
the relevant party in interest throughout the remainder of this Memorandum and Order. This
choice is consistent with the parties’ understanding, as reflected in their briefing. See, e.g., SAIC
MSJ Inf. at 9 n.1; SAIC MSJ Inf. – Def. Resp. at 7 (“SAIC’s motion for partial summary judgment
against the Government is based on the flawed premise that there is no fact or expert evidence to
rebut SAIC’s allegations of infringement against the DRS ENVG-III and the Elbit ENVG-B
systems.”).
6

party pleadings. See Notice by Elbit Systems of America, LLC, dated July 29, 2020 (ECF No.
135).
In sum, the Government has contracted at various times with several parties for the
development, manufacture, and procurement of the accused night vision goggles technology at
issue in this action. From these arrangements, SAIC has specifically accused the following devices
of infringement:
[the]
systems provided by Microsoft Corporation (“Microsoft”), ENVG-B
systems provided by L3 Technologies, Inc. (“L3”) with the support of its
subcontractor BAE Systems, Inc. (“BAE”), ENVG-III systems provided by BAE,
ENVG-B systems provided by Elbit Systems of America, LLC (“Elbit”) with the
support of its subcontractor DRS Networks & Imaging Systems, LLC (“DRS”), and
ENVG-III systems provided by DRS.
SAIC MSJ Inf. at 9 n.1. As noted, of the parties that contracted with the Government to develop
the accused night vision goggle technology, only Microsoft and L3 opted to join this action as
Intervenor-Defendant and Third-Party Defendant, respectively.
b.

The Soldier Enhanced Rapid Engagement and Vision in Ambient
Lighting (SERVAL) Patents

SAIC originally alleged infringement of the SERVAL family of patents, which consist of
the following four patents: U.S. Patent Nos. 7,787,012 (ECF No. 1-1 at 1–19) (the ’012 patent);
8,817,103 (ECF No. 1-1 at 20–37) (the ’103 patent); 9,229,230 (ECF Nos. 340-6, 343-2, 344-1,
352-1, 361-12, 362-1) (the ’230 patent); and 9,618,752 (ECF Nos. 1-1 at 93–146, 359-2, 361-11)
(the ’752 patent) (collectively, the SERVAL patents). On August 6, 2021, this Court issued its
claim construction opinion (Markman Opinion) construing several terms included in the
challenged patents. See Markman Op., 154 Fed. Cl. at 639. The Court’s constructions consisted
of the following definitions:
•

The terms “video images” / “video source image” / “video data of images” are construed
as “digital, analog, or nonstandard video frames” (Markman Op., 154 Fed. Cl. at 614–19,
639);
7

•

The term “transparent display” is construed as “a display that has the effect of being
transparent or translucent, allowing simultaneous viewing of the underlying visual field
and other images or information” (Markman Op., 154 Fed. Cl. at 619–24, 639);

•

The term “overlay” is construed “in accordance with its plain and ordinary meaning, ‘e.g.,
Overlaying: positioned over or upon. Overlay/overlays: are over or upon/is over or upon’”
(Markman Op., 154 Fed. Cl. at 624–27, 639);

•

The term “based on a comparison of data from the first and second video source images”
is construed as “based on a comparison of image data (e.g., content and contrast) from the
first and second video source images” (Markman Op., 154 Fed. Cl. at 627–29, 639);

•

The term “motion data” is construed as “data indicative of motion, including at least
orientation data” (Markman Op., 154 Fed. Cl. at 629–34, 639); and

•

The terms “in registration with” / “registering” (the Registration Terms) are construed as
indefinite under 35 U.S.C. § 112 (Markman Op., 154 Fed. Cl. at 634–39).
As a result of this Court’s construction of the “in registration with” and “registering” terms

as indefinite, the parties stipulated and jointly moved the Court for entry of summary judgment
that “all claims of U.S. Patent Nos. 7,787,012 (the ’012 patent), 8,817,103 (the ’103 patent), and
9,618,752 (the ’752 patent), as well as claims 3, 17 and 31 of U.S. Patent No. 9,229,230 (the ’230
patent) are invalid as a result of the Court’s findings of indefiniteness under Pre-AIA 35 U.S.C.
§ 112.” Joint Stipulation of Invalidity and Motion for Partial Summary Judgment Regarding the
Asserted Patents (ECF No. 208) (Joint Stipulation) at 2. Accordingly, the only patent remaining
at issue in this action is the ’230 patent, exclusive of dependent claims 3, 17, and 31. See id.
c.

The ’230 Patent

The ’230 patent, issued on January 5, 2016, identifies two inventors, General John Richard
Scales and Michael Harris Rodgers, and one assignee, Science Applications International
Corporation of McLean, VA. See Markman Op., 154 Fed. Cl. at 604; see generally ’230 patent.
The ’230 patent includes forty-two total claims, three of which are independent claims: claims 1,
15, and 29. Id. at 604–05 (citing ’230 patent at 24:25–30:42).
8

Claim 1 of the ’230 patent recites:
1. A system, comprising:
a first video source configured to generate images representing portions of an
external environment;
a second video source, movable independent of the first video source, configured
to generate images representing portions of the external environment;
a video display; and
a controller coupled to the first and second video sources and to the display, wherein
the controller is configured to
(a) receive video images from the first video source and from the second video
source,
(b) receive motion data indicative of motion of the first and second video
sources,
(c) identify, based on the received motion data, a part of a first video source
image that potentially represents a portion of the external environment
represented in a part of a second video source image;
(d) evaluate, based on a comparison of data from the first and second video
source images, the identification performed in operation (c); and
(e) display at least a portion of the first video source image and at least a portion
of the second video source image such that the second video source image
portion overlays a corresponding region of the first video source image portion,
wherein the corresponding region represents a portion of the external
environment represented in the second video source portion.
’230 patent at 24:25–51. 13

Claims 2 through 14 of the ’230 patent depend ultimately on

independent system claim 1. See id. at 24:52–26:26.

13

For clarity and consistency within this opinion, this Court adopts the following naming
convention:
•

Claim limitation “(a) receive video images from the first video source and from the second
video source” is referenced as “claim limitation 1(a).” ’230 patent at 24:34–35.

•

Claim limitation “(b) receive motion data indicative of motion of the first and second video
sources” is referenced as “claim limitation 1(b).” ’230 patent at 24:36–37.

•

Claim limitation “(c) identify, based on the received motion data, a part of a first video
source image that potentially represents a portion of the external environment represented
9

The second independent claim in the ’230 patent, claim 15, repeats claim limitations 1(a)
through 1(e) in gerund form and framed as a method claim, reciting:
15. A method, comprising:
(a) receiving video images from a first video source and from a second video source
representing portions of an external environment;
(b) receiving motion data indicative of motion of the first and second video sources;
(c) identifying, based on the received motion data, a part of a first video source image that
potentially represents a portion of the external environment represented in a part of a
second video source image;
(d) evaluating, based on a comparison of data from the first and second video source
images, the identification performed in step (c); and
(e) displaying at least a portion of the first video source image and at least a portion of the
second video source image such that the second video source image portion overlays a
corresponding region of the first video source image portion, wherein the corresponding
region represents a portion of the external environment represented in the second video
source portion.
Id. at 26:27–47. Claims 16 through 28 of the ’230 patent depend ultimately on claim 15. Id. at
26:48–28:16.

in a part of a second video source image” is referenced as “claim limitation 1(c).” ’230
patent at 24:38–41.
•

Claim limitation “(d) evaluate, based on a comparison of data from the first and second
video source images, the identification performed in operation (c)” is referenced as “claim
limitation 1(d).” ’230 patent at 24:42–44.

•

Claim limitation “(e) display at least a portion of the first video source image and at least
a portion of the second video source image such that the second video source image portion
overlays a corresponding region of the first video source image portion, wherein the
corresponding region represents a portion of the external environment represented in the
second video source portion” is referenced as “claim limitation 1(e).” ’230 patent at 24:45–
51.

This same convention likewise applies to the corresponding claim limitations recited in
independent claims 15 and 29. For example, claim limitation “(c) identifying, based on the
received motion data, a part of a first video source image that potentially represents a portion of
the external environment represented in a part of a second video source image” found in
independent claim 15 is referenced as “claim limitation 15(c).” ’230 patent at 26:33–36.
10

Finally, the third independent claim in the ’230 patent, claim 29, recites the same method
steps as claims 1 and 15, except it is framed as a “non-transitory machine-readable medium having
machine executable instructions for performing a method.” Id. at 28:17–18. It recites in full:
29. A non-transitory machine-readable medium having machine-executable instructions
for performing a method, comprising:
(a) receiving video images from a first video source and from a second video source
representing portions of an external environment;
(b) receiving motion data indicative of motion of the first and second video sources;
(c) identifying, based on the received motion data, a part of a first video source
image that potentially represents a portion of the external environment represented
in a part of a second video source image;
(d) evaluating, based on a comparison of data from the first and second video source
images, the identification performed in step (c); and
(e) displaying at least a portion of the first video source image and at least a portion
of the second video source image such that the second video source image portion
overlays a corresponding region of the first video source image portion, wherein
the corresponding region represents a portion of the external environment
represented in the second video source portion.
Id. at 28:17–38. Claims 30 through 42 of the ’230 patent depend ultimately on claim 29. Id. at
28:39–30:42.
The ’230 patent summarizes its purported invention as follows. See generally ’230 patent;
Markman Op., 154 Fed. Cl. at 604–09. “[A] computer receives images from two video sources,”
one “within a pair of goggles worn by a user” and the other “mounted to a rifle carried by the
user.” ’230 patent at 1:58–64. These video sources are independently movable and “generate[]
images that represent a portion of the external environment within [their] field of view.” Id.
Sensors coupled with the two video sources “provide data to the computer that indicates the spatial
orientations of those sources.” Id. at 1:64–66. The computer uses data from these sensors to
determine “a location for placing a video image (or portion thereof) from a second of the sources
(e.g., a rifle-mounted source) in the video image from a first of the sources (e.g., a goggles11

mounted source).” Id. at 1:67–2:3. The device then compares “[d]ata from the two images . . . in
order to evaluate the location determined from the sensor data. The sensor-based location is either
confirmed, or a new location is found based on additional image comparisons.” Id. at 2:6–9.
“Once a location is selected (either a confirmed sensor-based location or a location found using
image comparison), the two images are displayed such that the second source image (or a portion
of that image) overlays a corresponding portion of the first source image.” Id. at 2:9–14.
In summary, the ’230 patent contemplates a two-step alignment process in which the
computer “first uses data from motion sensors to help align images from two different sources,”
then “compar[es] the content of the images themselves to evaluate whether the alignment is correct
and to adjust the alignment as necessary” prior to displaying those images. See Markman Op., 154
Fed. Cl. at 608 (citing ’230 patent at 2:6–17). This two-step alignment process is touted as an
improvement over the previous methods embodied in the ’012 patent and ’103 patent, which relied
solely on orientation data to align incoming images. See id. at 607–08 (citing ’012 patent claims
1, 17; ’103 patent, claim 1). This is because, as the ’230 patent acknowledges, “‘many low-cost
[inertial measurement unit (IMU)] sensors experience bias drift over time’ that ‘can result in
relative orientation errors of several degrees per hour.’” Id. at 608 (citing ’230 patent at 1:38–41)
(alterations in original).
The invention claimed in the ’230 patent “is illustrated by way of example, and not by way
of limitation,” through numerous figures included within the specification, each of which are
accompanied by written descriptions. See ’230 patent at 2:35–3:20. For example, Figure 4 of the
’230 patent, pictured below, provides an example of a displayed image resulting from the two-step
alignment process.

12

See Markman Op., 154 Fed. Cl. at 608–09 (describing how the invention achieves the image in
Figure 4); see also ’230 patent at 6:54–7:25. “The [heads-up display] portion of user display 70
is shown as a rectangular region 73 in the center portion of the goggles [field of view].” Id. at 7:3–
5. “[O]verlaid on [the heads-up display] 73 is a weapon view 74 corresponding to (and generated
from) the scope image.” Id. at 7:6–8. “[T]he location and rotation of weapon view 74 within user
display 70 is determined by computer 30 based on output from sensors 13 and 18 and based on
comparison of the scope image with the goggles image.” Id. at 7:19–22. “As rifle 19 is moved,
scope images (or portions thereof) are dynamically positioned within user display 70 so as to
indicate where scope 17 (and thus rifle 19) is pointing.” Id. at 7:22–25.
Additionally, Figures 5A and 5B, pictured below, depict a flow chart “explaining the
operation of system 10.” Id. at 7:46–47; see Markman Op., 154 Fed. Cl. at 609.
[Continued on next page]

13

Likewise, Figures 7 and 14, also pictured below, portray examples of potential
embodiments for the “evaluate” operation recited in claim limitations 1(d), 15(d), and 29(d). See
’230 patent at 2:55–56 (“[Figure] 7 is a flow chart providing additional details for [block 117] in
the flow chart of [Figures] 5A and 5B.”); id. at 3:4–5 (“[Figure] 14 is a flow chart for an alternate
image comparison algorithm.”).

14

[Continued on next page]

15

B.

Summary of Rulings

For the reasons stated in this Memorandum and Order, the Court orders the following
disposition of the parties’ seven pending motions. Plaintiff SAIC’s Motion to Strike Untimely
Non-Infringing Alternatives and Non-Infringement Theories (ECF No. 352) is DENIED in part,
solely as it pertains to Microsoft’s non-infringement theory. Defendants’ Joint Motion to Strike
the Declaration of SAIC's Infringement Expert, Dr. Bajaj, Expressing New Infringement Opinions
(ECF No. 377) is GRANTED.

Intervenor-Defendant Microsoft Corporation’s Motion for
16

Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 339) is DENIED. Defendant
the United States and Third-Party Defendant L3 Technologies, Inc.’s Joint Motion for Summary
Judgment of Invalidity Based on Indefiniteness (ECF No. 342) is DENIED. Intervenor-Defendant
Microsoft Corporation’s Motion for Summary Judgment of Non-Infringement (ECF No. 343) is
GRANTED. Third-Party Defendant L3 Technologies, Inc.’s Motion for Summary Judgment of
Non-Infringement (ECF No. 341) is DENIED. Plaintiff SAIC’s Motion for Partial Summary
Judgment of Infringement by the Government (ECF No. 340) is DENIED. Plaintiff SAIC’s
Motion for Summary Judgment regarding the Desert's Edge Prior Art Status (ECF No. 340) is
DENIED as MOOT.
II.

Motions to Strike
The parties have filed dueling motions to strike related to their summary judgment motions.
First, on March 13, 2023, SAIC filed a Motion to Strike urging this Court to strike one of

Microsoft’s non-infringement theories (SAIC’s Motion to Strike). 14 See SAIC MTS. Specifically,
SAIC alleges Microsoft 15 untimely and inadequately disclosed its non-infringement theory that
“the claims require an order of operation and that [Microsoft’s] accused products do not meet this

14

SAIC’s Motion to Strike also contested the timeliness of Defendants’ non-infringing alternatives
theories. The Court addressed that portion of SAIC’s Motion in a separate opinion (ECF Nos. 415
(sealed), 419 (public)).
15

Although L3 likewise raised a non-infringement argument centered on the alleged order of the
’230 patent claim limitations in its Motion for Summary Judgment of Non-Infringement (ECF No.
341 at 40–44), SAIC did not move to strike L3’s ordering theory as untimely. See generally SAIC
MTS at 23–33 (repeatedly addressing “Microsoft’s” allegedly untimely ordering theory); SAIC
MTS – Def. Resp. at 19 n. 6 (noting that “SAIC’s motion to strike the ‘order of the claims noninfringement theory’ is directed to Microsoft and not the other Defendants . . . and only accuses
Microsoft of untimely disclosure”); Oral Argument Transcript, dated June 22, 2023 (ECF No. 400)
(OA Tr.) at 30:17–19 (when questioned by the Court why SAIC did not move to strike L3’s
ordering arguments, SAIC counsel acknowledged SAIC “responded in the summary judgment
motion as opposed to separately filing a motion to strike”).
17

order,” (the ordering theory). 16 SAIC MTS at 7. SAIC contends Microsoft failed to adequately
disclose its ordering theory until after the close of fact discovery and that Microsoft’s ordering
theory evolved over time such that Microsoft’s initial disclosures did not provide SAIC with
adequate notice. See, e.g., SAIC MTS at 28 (“SAIC seeks only to hold Microsoft to what it
disclosed in its final non-infringement contentions, rather than allowing Defendants to raise new
theories and evidence in support of those theories at the rebuttal expert report or summary
judgment phase.”). Accordingly, SAIC moves to strike the following items from the record and
to preclude Microsoft “from presenting these theories at trial to the extent that they put forward
new or changed theories that Defendants did not include in their final contentions”:
a. Paragraphs 7, 11–19, 23, 24, 26–30, and 65–70 from Appendix D to Dr. John
Villasenor’s Rebuttal Expert Report on Infringement (ECF No. 343-11, 350-1, 3525, 362-12) (Villasenor Appendix D or Villasenor App. D);
b. Paragraphs 18–25 of Dr. Hany Farid’s Rebuttal Expert Report on Infringement
(ECF No. 343-13, 350-9, 352-14, 362-15) (Farid Report or Farid Rpt.); and
c. Paragraphs 2.a–2.e of the Declaration of Microsoft witness
(ECF No. 343-4, 352-15) (
Declaration or

Decl.).

See SAIC MTS at 9, 34.
Second, on April 12, 2023, Defendants jointly filed a corresponding Motion to Strike
(Defendants’ Motion to Strike) seeking to exclude from the record the March 29, 2023
supplemental declaration of SAIC’s infringement expert, Dr. Chandrajit Bajaj, that SAIC attached
as Exhibit C to SAIC’s opposition to Microsoft’s Motion for Summary Judgment of Non-

16

See MSFT MSJ NI at 6 (arguing “the Asserted Claims require the ‘identify’, ‘evaluate’, and
‘display’ operations be performed in that order on pairs of the received images” and asserting the
“Microsoft Accused Products never perform the three basic operations in the order required by the
claims on an incoming pair of images”) (emphasis in the original).
18

Infringement. 17 See generally Def. MTS; see generally Declaration of Chandrajit Bajaj, dated
March 29, 2023 (ECF No. 362-3) (Supplemental Bajaj Declaration or Supp. Bajaj Decl.).
Defendants characterize the Supplemental Bajaj Declaration as a “new and untimely supplemental
expert report expressing new opinions” and urge the Court to “preclude SAIC from offering any
evidence related to such opinions either in opposing summary judgment or at trial.” Def. MTS at
5, 16. In the alternative, Defendants seek reasonable time to respond to the Supplemental Bajaj
Declaration with “its own expert testimony, take Dr. Bajaj’s deposition, file any Rule 702/Daubert
motions, and renew its summary judgment motions to the extent needed.” Id. at 23.
Having considered the parties’ arguments, applicable law, and the record, this Court
DENIES SAIC’s Motion to Strike (ECF No. 352), solely as it pertains to Microsoft’s noninfringement theory, and GRANTS Defendants’ Motion to Strike (ECF No. 377).

The

Supplemental Bajaj Declaration (ECF No. 362-3) is accordingly stricken from the record. SAIC
is precluded from relying on any opinions expressed in the Supplemental Bajaj Declaration, both
in opposing Defendants’ summary judgment motions and at trial. 18

17

Although SAIC only attached the Supplemental Bajaj Declaration as an exhibit to its brief
opposing Microsoft’s Motion for Summary Judgment of Non-Infringement, SAIC cites the
Supplemental Bajaj Declaration extensively throughout its briefs opposing Microsoft’s and L3’s
respective Motions for Summary Judgment for Non-Infringement. See MSFT MSJ NI – SAIC
Resp. at 14, 29–31, 33–34, 38–41; L3 MSJ NI – SAIC Resp. at 10–11, 14–15, 24, 27, 32, 35, 37,
41–42, 46. SAIC likewise relied on the contents of the Supplemental Bajaj Declaration at certain
points during Oral Argument. See, e.g., OA at 107:15–17 (SAIC counsel acknowledging SAIC’s
antecedent basis argument relied on the Supplemental Bajaj Declaration).
18

In a Joint Status Report (JSR) dated January 27, 2023, the parties agreed that any Motions to
Strike expert opinions, or portions thereof, would be filed in conjunction with their dispositive
motions. See JSR, dated January 27, 2023 at 2; see infra Discussion Section II(C)(b) (addressing
the parties’ decision-making process on this issue). Accordingly, consistent with the parties’
preference as stated in the JSR, this Court considers the parties’ respective Motions to Strike in
conjunction with their respective Motions for Summary Judgment.
19

A.

Background

The parties have engaged in vigorous discovery practice throughout this litigation. The
parties’ actions in both fact and expert discovery as related to the present Motions to Strike are no
exception. Background relevant to (a) SAIC’s Motion to Strike, and (b) Defendants’ Motion to
Strike is explained further below.
a.

Relevant Background Regarding SAIC’s Motion to Strike – SAIC
Interrogatory No. 5 and Microsoft’s Response

The timeliness and thoroughness of both SAIC Interrogatory No. 5 and Microsoft’s
Response to that interrogatory are at the heart of SAIC’s Motion to Strike. This issue is not new
to this Court; indeed, it was the subject of prior, vigorous motion practice before this Court. A
review of the litigation history on this issue is relevant to adjudication of this Motion.
SAIC first requested disclosure of Microsoft’s non-infringement theories on June 24, 2019,
when it served contention Interrogatory No. 5 on Microsoft. Plaintiff SAIC’s First Set of
Interrogatories to Microsoft Corp. (ECF No. 352-11) at 3–4. Interrogatory No. 5 reads as follows:
If you contend that the Accused Products do not infringe, describe that contention
in detail and include in Your answer: (a) an identification of the claim element or
elements of the Asserted Patents that are allegedly not present in or practiced by
the Accused Products; (b) an identification by Bates number of all Documents You
rely on to support such a non-infringement defense; and (c) an identification of the
three individuals at Microsoft who are most knowledgeable about the structure,
function, and operation of the Accused Products or components thereof relevant to
Your non-infringement defense.
Id. Microsoft initially responded to Interrogatory No. 5 on July 24, 2019, listing a standard set of
objections to the interrogatory and further stating:

20

Microsoft’s Response to SAIC’s First Set of Interrogatories (ECF No. 352-12) at 3–4. Microsoft
later supplemented its response to Interrogatory No. 5 on June 30, 2020 (June 30, 2020
Supplement), asserting

Microsoft’s First Supplemental Response to Interrogatory No. 5,
dated June 30, 2020 (ECF No. 367-18) at 11; see id.

On April 14, 2022, SAIC moved to compel Microsoft to further supplement its responses
to Interrogatory No. 5 and provide greater clarity on its substantive non-infringement positions.
See SAIC’s Motion to Compel Discovery (ECF No. 265) (SAIC Motion to Compel); Microsoft’s
Response to SAIC’s Motion to Compel Discovery and Cross-Motion to Compel Infringement
Contentions (ECF No. 268); SAIC’s Reply in Support of its Motion to Compel Discovery (ECF
No. 271). In its Response to SAIC’s Motion to Compel, Microsoft cross-moved to compel SAIC
to provide “meaningful infringement contentions,” alleging the infringement contentions SAIC
had submitted to date failed to provide adequate explanation of how Microsoft’s accused devices
infringe. See Microsoft’s Response to SAIC’s Motion to Compel Discovery and Cross-Motion to
21

Compel Infringement Contentions (ECF No. 268) at 2; SAIC’s Response to Microsoft’s CrossMotion to Compel Infringement Contentions (ECF No. 274); Microsoft’s Reply in Support of its
Motion to Compel Infringement Contentions (ECF No. 276).
On June 1, 2022, this Court heard oral argument on SAIC’s and Microsoft’s respective
Motions to Compel. See Hearing Transcript, dated June 1, 2022 (ECF No. 281) (June 1, 2022 Tr.).
During the hearing, the Court issued a detailed oral ruling denying both parties’ motions. Id. at
68:7; see Order, dated June 1, 2022 (ECF No. 278). In doing so, the Court ordered Microsoft to
provide an updated response to Interrogatory No. 5 by June 15, 2022. June 1, 2022 Tr. at 68:11–
15 (ordering Microsoft to “tighten up [its] response to Interrogatory 5, to be more explanatory at
this time, to the extent possible.”); see Order, dated June 1, 2022 (ECF No. 278). Additionally,
the Court encouraged SAIC to further clarify its own infringement contentions, noting that while
the contentions submitted up to that date passed muster relative to Microsoft’s Motion to Compel,
the question remained whether the current form of the contentions would prove sufficiently
detailed to qualify as final infringement contentions. June 1, 2022 Tr. at 68:23–70:14. The Court
cautioned both parties to “overgeneralize at [their] own peril,” and warned that the Court intended
to “hold both sides to” the information contained in their final contentions and interrogatory
responses. Id. at 69:16–17; id. at 69:19–20 (the Court noting both parties will be “stuck with” the
information contained in their final contentions and interrogatory responses). The Court finally
made clear that it would not “allow Microsoft to spring a new noninfringement theory on SAIC”
beyond the theories Microsoft would disclose in what the Court referenced as its “final
supplement[] to Interrogatory 5.” Id. at 70:3–10.
On June 14, 2022, the Court issued a Scheduling Order establishing June 30, 2022 as the
deadline for final infringement and invalidity contentions. Scheduling Order, dated June 14, 2022

22

(ECF No. 285) (June 14, 2022 Scheduling Order) at 1. The Court also (i) ordered Microsoft to
serve its Final Supplemental Response to Interrogatory No. 5 by July 21, 2022, and (ii) ordered
SAIC to submit any additional written discovery regarding Microsoft’s Final Supplemental
Response by August 1, 2022. Id. at 1–2. Although the fact discovery period was scheduled to end
on August 9, 2022, the Court specifically carved out a period of 30 additional days for Microsoft
to respond to any written discovery from SAIC regarding Microsoft’s Final Supplemental
Response to Interrogatory No. 5. Id. at 2 (setting August 9, 2022 as the deadline for fact discovery
but noting that “[n]otwithstanding this fact discovery deadline, Microsoft shall have 30 days to
respond to Plaintiff’s written discovery, if any, regarding Microsoft’s Final Supplemental
Response to Plaintiff’s Interrogatory No. 5”).
Consistent with the Scheduling Order, Microsoft served its Final Supplemental Response
to Interrogatory No. 5 on July 21, 2022. See Microsoft’s Fourth Supplemental Response to SAIC’s
Interrogatory No. 5 (ECF Nos. 352-10, 362-11, 367-12, 375-3) (July 21, 2022 Supplement) 19 at
4–30. As part of its July 21, 2022 Supplement, Microsoft explained that its devices do not infringe
the “display” claim limitation of claims 1, 15, and 29 of the ’230 patent because SAIC

19

The July 21, 2022 Supplement is entered into the record under various ECF numbers. See ECF
Nos. 352-10, 362-11, 367-12, 375-3. Accordingly, for consistency in this opinion, all page number
citations for the July 21, 2022 Supplement reference the document submitted through ECF No.
367-12.
23

Id. at 19–20.
On July 29, 2022, after receipt of Microsoft’s Final Supplemental Response, SAIC deposed
L3’s Rule 30(b)(6) witness, Jason Coffman. See Deposition of Jason Coffman, dated July 29,
2022 (ECF Nos. 367-3, 344-10) (Coffman Depo. Tr.). Two days later, the Court’s August 1, 2022
deadline for SAIC to submit additional written discovery pertaining to Microsoft’s July 21, 2022
Supplement passed without SAIC submitting additional interrogatory requests, despite the Court’s
express invitation to do so. See June 14, 2022 Scheduling Order at 2; SAIC MTS – Def. Resp. at
21 (“This August 1st opportunity for SAIC to serve additional discovery regarding Microsoft’s
noninfringement defenses, however, came and went without SAIC serving any such additional
written discovery.”) (emphasis in original); OA Tr. at 14:12–13:5 (SAIC counsel acknowledging
SAIC did not take additional written discovery pertaining to Microsoft’s July 21, 2022
Supplement). Instead, on August 4, 2022, two weeks after receiving Microsoft’s July 21, 2022
Final Supplemental Response, SAIC deposed Microsoft’s Rule 30(b)(6) witness, software
engineer

. See Deposition of

(ECF No. 350-7, 362-5, 366-3, 367-6, 343-25) (

, dated August 4, 2022
Depo. Tr.). Fact discovery concluded

on August 9, 2022. June 14, 2022 Scheduling Order at 2.
b.

Relevant Background Regarding Defendants’ Moton to Strike – Dr.
Bajaj’s Supplemental Expert Report

The timeliness of a supplemental expert report authored by SAIC’s expert is at the heart of
Defendants’ Motion to Strike. On September 13, 2022, the parties filed a joint Motion to Amend
the Schedule for Expert Discovery. See ECF No. 315. On September 14, 2023, the Court issued
an Amended Scheduling Order, granting the parties’ motion and extending certain expert
discovery deadlines. See Scheduling Order, dated September 14, 2022 (ECF No. 316) (September
24

14, 2022 Scheduling Order). In accordance with this schedule, on September 30, 2022, the parties
served opening expert reports pursuant to Rule 26(a)(2)(B). See id. at 1. At that time, SAIC served
its opening expert report on infringement prepared by Dr. Chandrajit Bajaj. See Opening Expert
Report of Dr. Chandrajit Bajaj, Ph.D. on Infringement of U.S. Patent No. 9,229,230 (ECF Nos.
340-3, 361-3, 362-9, 372-13) (Bajaj Opening Report or Bajaj Op. Rpt.). 20 Dr. Bajaj also attached
an appendix to his opening report to separately address his infringement opinions regarding
Microsoft’s accused devices. See Opening Expert Report of Dr. Chandrajit Bajaj, Ph.D. on
Infringement – Appendix A (ECF No. 343-24, 362-4) (Bajaj Appendix A or Bajaj App. A).
Similarly, Defendants timely served their opening report on invalidity prepared by Dr. John
Villasenor. See Opening Expert Report of Dr. John Villasenor Regarding Invalidity of SAIC’s
U.S. Patent No. 9, 229, 230 (ECF No. 340-21, 343-10) (Villasenor Opening Report or Villasenor
Op. Rpt.).
The parties exchanged rebuttal expert reports on November 23, 2022. See Order, dated
November 16, 2022 (ECF No. 326) (amending deadline for rebuttal expert reports to November
23, 2023 upon parties’ consent motion (ECF No. 325)); SAIC MTS at 27. Specifically, Defendants
timely served their rebuttal expert report, prepared by Dr. John Villasenor, contesting
infringement. See Rebuttal Expert Report of Dr. John Villasenor Regarding SAIC’s U.S. Patent
No. 9,229,230 (ECF No. 340-4, 343-29) (Villasenor Rebuttal Report or Villasenor Reb. Rpt.). Dr.
Villasenor likewise attached two appendices to his rebuttal expert report separately addressing his

20

On November 15, 2022, SAIC filed an unopposed Motion for Leave to Amend Opening Expert
Reports on Infringement and Damages. ECF No. 325. On November 16, 2022, this Court granted
SAIC’s unopposed Motion for Leave to Amend for good cause shown. Order, dated November
16, 2022 (ECF No. 326). Subsequently, SAIC served Dr. Bajaj’s Amended Opening Report on
Infringement, dated November 4, 2023. See Amended Opening Expert Report of Dr. Chandrajit
Bajaj, Ph.D. on Infringement of U.S. Patent No. 9,229,230 (ECF Nos. 341-1, 353-6, 376-2) (Bajaj
Amended Opening Report or Bajaj Am. Op. Rpt.).
25

non-infringement opinions for L3’s and Microsoft’s respective accused devices. See Rebuttal
Expert Report of Dr. John Villasenor Regarding SAIC’s U.S. Patent No. 9,229,230 – Appendix C
(ECF Nos. 340-4, 344-3, 350-6, 352-7, 364-8, 366-1) (Villasenor Appendix C or Villasenor App.
C); Rebuttal Expert Report of Dr. John Villasenor Regarding SAIC’s U.S. Patent No. 9,229,230 –
Appendix D (ECF Nos. 343-11, 340-4, 350-1, 352-5, 362-12) (Villasenor Appendix D or
Villasenor App. D). Additionally, Microsoft served a second rebuttal expert report authored by
Dr. Hany Farid analyzing Microsoft’s source code. See Rebuttal Expert Report of Dr. Hany Farid
Regarding Microsoft’s

Source Code (ECF Nos. 343-13, 350-9, 352-14, 362-15) (Farid

Report). At this time, SAIC also served its rebuttal expert report on invalidity prepared by Dr.
Chandrajit Bajaj. See Expert Report of Dr. Chandrajit Bajaj, Ph.D., in Response to Dr. Villasenor’s
Report on Invalidity of U.S. Patent No. 9,229,230 (ECF Nos. 340-17, 343-28, 344-18, 364-2, 37215) (Bajaj Rebuttal Report or Bajaj Reb. Rpt.). Expert discovery closed on December 13, 2022.
See Order, dated November 16, 2022 (ECF No. 326) at 2. 21
Subsequently, the parties filed motions for summary judgment and, relevant to the present
Motions, SAIC filed its Response to Microsoft’s Motion for Summary Judgment of NonInfringement on March 29, 2023. See generally MSFT MSJ NI – SAIC Resp. Attached as an
exhibit to its Response, SAIC included a previously undisclosed, supplemental declaration of Dr.
Chandrajit Bajaj, dated March 29, 2023. See Supp. Bajaj Decl. In this 29-page substantive
declaration, Dr. Bajaj offered, in support of SAIC, new and previously undisclosed theories of

21

On December 13, 2022, the parties filed a Joint Stipulation and Motion for Leave to Extend the
Deadline of Certain Depositions. ECF No. 331. Specifically, the parties “stipulate[d] and jointly
move[d] the Court for leave” to allow SAIC to take the depositions of fact witness Dr. Rohan
Loveland and declarant Ms. Hsieh-Yee on December 16 and 20, 2022, respectively. Id. at 1. This
Court granted the parties’ joint Motion for Leave on December 13, 2022. Minute Order, dated
December 13, 2022.
26

infringement pertaining to Microsoft’s ordering theory of non-infringement (¶¶ 18–45), a neverbefore-raised doctrine of equivalents theory of infringement (¶¶ 46–64), and additional
commentary on (1) whether L3’s accused devices satisfy the patent claims’ “overlay” operation,
and (2) the

(¶¶ 65–

72). See id. ¶¶ 18–72. The Supplemental Bajaj Declaration is the subject of Defendants’ Motion
to Strike. See Def. MTS at 5 (“Defendants respectfully request that the Court strike the new and
untimely supplemental expert report expressing new opinions of Plaintiff SAIC’s technical expert
– Dr. Cha[n]drajit Bajaj – submitted with SAIC’s summary judgment opposition briefs.”).
B.

Applicable Legal Standards – Motions to Strike

On July 2, 2018, the United States Court of Federal Claims adopted the “Patent Rules of
the United States Court of Federal Claims” (Local Patent Rules). Rules at Appendix J. These
Local Patent Rules were not in effect at the time Plaintiff filed this case, and all parties agree such
rules do not govern the present action. See Hearing Transcript, August 27, 2020 (ECF No. 139)
at 19:17–23:17, 28:2–17. The Local Patent Rules, therefore, are not binding authority for this case.
All other Rules remain binding.
Rule 33 lists the requirements that govern interrogatories between parties. See Rule 33.
Under Rule 33(b)(3), “[e]ach interrogatory must, to the extent it is not objected to, be answered
separately and fully in writing under oath.” Rule 33(b)(3). During fact discovery, parties may
issue contention interrogatories, which are “designed to discover the factual basis of the allegations
in a complaint, answer, or counterclaim, or to determine the theory of the opposing party’s case.”
Contention Interrogatory, Black’s Law Dictionary (11th ed. 2019).
Rule 26(a)(2) addresses required disclosures related to a party’s expert witnesses. See Rule
26(a)(2). Under this rule, an expert’s report must contain “a complete statement of all opinions

27

the [expert] will express and the basis and reasons for them.” Rule 26(a)(2)(B)(i). “A party must
make these disclosures at the times and in the sequence that the court orders.” Rule 26(a)(2)(D).
Rule 26(e)(1) imposes a duty on parties to supplement their interrogatory responses and
expert reports in certain circumstances. See Rule 26(e)(1). The rule states that “[a] party who has
made a disclosure under [Rule] 26(a)—or who has responded to an interrogatory, request for
production, or request for admission—must supplement or correct its disclosure or response . . . in
a timely manner if the party learns that in some material respect the disclosure or response is
incomplete or incorrect, and if the additional or corrective information has not otherwise been
made known to the other parties during the discovery process or in writing” or “as ordered by the
court.” Rule 26(e)(1)(A)–(B). “For an expert whose report must be disclosed under [Rule]
26(a)(2)(B), the party's duty to supplement extends both to information included in the report and
to information given during the expert's deposition.” Rule 26(e)(2).
Failure to comply with any of these disclosure requirements can result in sanctions. Under
Rule 37(c)(1), “[i]f a party fails to provide information or identify a witness as required by [Rule]
26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a
motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.” Rule
37(c)(1). The extent of the sanction imposed, if any, is at the discretion of the trial court. See Rule
37(c)(1)(A)–(C) (“In addition to or instead of [the exclusion] sanction, the court, on motion and
after giving an opportunity to be heard . . . may order payment of the reasonable expenses,
including attorney’s fees, caused by the failure . . . [and] may impose other appropriate sanctions.
. . .”) (emphasis added); see, e.g., Precision Pine & Timber, Inc. v. United States, No. 98-720 C,
2001 WL 1819224, at *3 (Fed. Cl. Mar. 6, 2001) (citing Adkins v. United States, 816 F.2d 1580,
1581–82 (Fed. Cir. 1987)) (“The decision on whether to impose discovery sanctions, either

28

pursuant to its inherent authority or under existing Rules of the Court of Federal Claims rests
within the sound discretion of the Court.”); Bowman Constr. Co. v. United States, No. 18-1822C,
2020 WL 1970546, at *3 (Fed. Cl. Apr. 23, 2020) (quoting Ingalls Shipbuilding, Inc. v. United
States, 857 F.2d 1448, 1450 (Fed. Cir. 1988)) (“The decision whether to impose discovery
sanctions rests within the sound discretion of the trial court.”).
To avoid sanctions, the party that failed to meet its discovery obligations bears the burden
to demonstrate its failure was either “substantially justified or harmless.” Rule 37(c)(1); see, e.g.,
Zoltek Corp. v. United States, 71 Fed. Cl. 160, 167 (2006) (“Circuit courts applying the federal
rule have held that the sanction of exclusion is automatic and mandatory unless the party violating
[Rule] 26 shows that the violation was justified or harmless.”); Scott Timber, Inc. v. United States,
93 Fed. Cl. 221, 226 (2010) (noting “the burden is on the offending party to show that its violation
was either justified or harmless” and citing as support cases from the First, Fifth, and Seventh
Circuits). The court has wide discretion to determine whether a non-disclosing party’s conduct
was “substantially justified or harmless.” See, e.g., Hanover Ins. Co. v. United States, 137 Fed.
Cl. 479, 483 (2018) (citing Cohen v. United States, 100 Fed. Cl. 461, 468 (2011)).
This Court may consider a variety of factors to determine whether a disclosure failure was
“substantially justified or harmless,” or whether such conduct warrants sanctions. These factors
include (1) prejudice or surprise to the opposing party; (2) ability to cure that prejudice or surprise;
(3) the importance of the challenged evidence; (4) the extent to which admitting the evidence
would disrupt trial; (5) the non-disclosing party's explanation for their conduct; and (6) whether
the party acted in bad faith or willfully. 22 See, e.g., SAIC, 163 Fed. Cl. at 272–73; MicroStrategy

22

Though some courts have required a showing of willfulness or bad faith prior to imposing
sanctions, such a requirement is not universally applied. See, e.g., SAIC v. United States, 162 Fed.
Cl. 257, 272 n.19 (2022) (discussing decisions by various circuits and whether those courts
29

Inc., v. Bus. Objects, S.A., 429 F.3d 1344, 1357 (Fed. Cir. 2005) (quoting Southern States Rack &
Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596 (4th Cir. 2003)) (five-factor test that
included surprise, ability to cure surprise, disruption of trial, the importance of the testimony, and
the party's explanation for its failure to disclose); David v. Caterpillar, Inc., 324 F.3d 851, 857
(7th Cir. 2003) (four-factor test considering prejudice or surprise to the party, the ability to cure
surprise, the likelihood of disruption to trial, and the bad faith or willfulness of the non-disclosing
party); Hitkansut LLC v. United States, 127 Fed. Cl. 101, 107 (2016) (“[T]he court may consider
surprise to the other party, whether there is opportunity to cure that surprise, the proponent's need
for the evidence at trial, or other factors.”); Banks v. United States, 75 Fed. Cl. 294, 298–99 (2007)
(summarizing the various tests that courts have applied and adopting the approach applied by the
Third, Seventh, and Tenth Circuits).

required a showing of willfulness). Typically, courts will not sanction by dismissing a case, or
imposing a sanction tantamount to dismissal, absent a showing of willfulness or bad faith. See,
e.g., Intelligent Invs., Inc. v. United States, No. 2021-2310, 2022 WL 17075056, at *1 (Fed. Cir.
Nov. 18, 2022) (“[W]e conclude that the Claims Court abused its discretion by dismissing the case
without finding that the noncompliance was willful or in bad faith. . . .”); Securiforce Int'l Am.
LLC v. United States, 127 Fed. Cl. 386, 396 (2016) (quoting Ingalls Shipbuilding, Inc. v. United
States, 857 F.2d 1448, 1451 (Fed. Cir. 1988)) (noting sanctions such as “de facto dismissal”
necessitate a showing of bad faith or willfulness, although Rule 37 does not explicitly state such a
requirement). However, courts have not demonstrated a clear consensus whether demonstration
of bad faith or willfulness is necessary prior to imposing lesser sanctions. Compare Toyrrific, LLC
v. Karapetian, 606 Fed. Appx. 365 (9th Cir. 2015) (declining to affirm evidentiary exclusion for a
Rule 26 violation that had no evidence of bad faith) with Zoltek, 71 Fed. Cl. at 168 (refusing to
require showing of bad faith and “instead choosing to subsume it into the justification requirement
in analyzing the explanation for the party's failure to disclose”). Instead, courts consider whether
the sanction is proportionate to the offending party’s discovery conduct. See, e.g., Adasa Inc. v.
Avery Dennison Corp., 55 F.4th 900, 917 (Fed. Cir. 2022) (“And, while district courts may impose
[discovery] sanctions for deterrent effects, the size of the award must bear a reasonable relationship
to the harm that occurred.”); Salgado v. Gen. Motors Corp., 150 F.3d 735, 740 (7th Cir. 1998)
(refusing to grant dismissal sanctions that were not “proportionate to the circumstances
surrounding [the] party's failure to comply with discovery rules”) (quoting Melendez v. Illinois
Bell Tel. Co., 79 F.3d 661, 672 (7th Cir. 1996)); Canvs Corp. v. United States, 104 Fed. Cl. 727,
733 (2012) (acknowledging that the discovery sanction imposed was a “fair and appropriate
sanction proportional to the misconduct in question”).
30

C.

Discussion – Motions to Strike

SAIC and Microsoft have filed dueling Motions to Strike that share common subject
matter. Both Motions to Strike relate to a non-infringement argument that Microsoft and L3 have
each raised in their respective Motions for Summary Judgment for Non-Infringement. See
generally MSFT MSJ NI; L3 MSJ NI. Microsoft and L3 each contend in summary judgment
briefing that their respective accused devices do not infringe the asserted claims because their
products do not perform the patent’s operations in the order allegedly required by the patent. See
MSFT MSJ NI at 29–38; L3 MSJ NI at 40–44. In responding to this argument, as noted, SAIC
attached the Supplemental Bajaj Declaration as an exhibit to its brief opposing Microsoft’s Motion
for Summary Judgment of Non-Infringement, expressing novel theories of infringement. See
MSFT MSJ NI – SAIC Resp. at 6 (listing the Supplemental Bajaj Declaration as Exhibit C); Supp.
Bajaj Decl.
SAIC now moves to strike Microsoft’s ordering theory of non-infringement as untimely.
SAIC MTS at 23–33. Defendants likewise filed their own joint Motion to Strike, urging this Court
to strike the Supplemental Bajaj Declaration from the record and preclude SAIC from relying on
any theories raised therein. See generally Def. MTS. This Court addresses each Motion to Strike
in turn below. 23
a.

SAIC’s Motion to Strike Microsoft’s Ordering Theory of NonInfringement

SAIC asserts this Court should strike all references to Microsoft’s ordering theory of noninfringement on the basis that Microsoft purportedly failed to timely disclose its theory with

23

The parties have expressed many overlapping arguments in their briefing across the two Motions
to Strike. As a result, this Court considers and references the parties’ arguments raised collectively
within all six briefs in ruling on each Motion to Strike.
31

in its July 21, 2022 Supplement. See, e.g., SAIC MTS at 7 (noting Microsoft’s final noninfringement contentions “provide[d] an insufficient conclusory statement that the claims require
an order of operation and that the accused products do not meet this order”); id. at 29 (“Before the
July 21st date of its final contentions, Microsoft had never disclosed to SAIC that Microsoft
believes that claim elements (c), (d), and (e) have an order.”); id. (“Defendants further should have
at least provided SAIC with some notice before their final contentions, not served until July 21,
2022, a mere three and a half weeks before the close of fact discovery.”); id. at 33 (“The new
theories raised in Defendants’ final contentions, rebuttal expert reports, and in
declaration should have been disclosed at a time when SAIC could pursue rebuttal discovery.”).
However, SAIC challenges the July 21, 2022 Supplement as untimely because “SAIC could no
longer serve discovery requests that would have to be answered before the close of fact discovery.”
SAIC MTS at 26. SAIC doubles down on this position later in its Motion to Strike, stating that
“[b]y the time SAIC received those [July 21, 2022] contentions, it could no longer serve fact
discovery requests because fact discovery closed less than 30 days thereafter and thus could no
longer obtain additional information on the accused instrumentalities.” Id. at 29–30 (citing Rule
34(b)(2)(a)’s requirement that parties receiving requests for production be granted 30 days to
respond to such requests).
However, in contrast, SAIC also asserts it first learned of Microsoft’s ordering theory after
fact discovery closed on August 9, 2022. See OA Tr. at 15:10–13 (Court: “[B]ut [Microsoft’s
ordering theory] was disclosed in the final contention in July.” SAIC Counsel: “Respectfully, it
was not . . . .”). Sometimes, SAIC also states it first learned of Microsoft’s ordering theory through
Microsoft’s rebuttal expert reports. See, e.g., MSFT MSJ NI – SAIC Resp. at 36 (“Microsoft failed
to disclose this new non-infringement argument in its response to SAIC’s non-infringement

33

contention interrogatory, and instead, presented it substantially for the first time in Dr. Villasenor’s
expert rebuttal report.”); id. at 9 (“Microsoft sandbagged, withholding its noninfringement
contention based on this theory until its rebuttal expert reports.”) (emphasis omitted); SAIC MTS
at 7 (contending Microsoft’s experts “present[ed] new non-infringement arguments for the first
time in their rebuttal expert reports”); id. (“[R]ebuttal expert reports are too late to disclose the
basis for a new claim construction theory.”). At other times, SAIC alleges it first learned of
Microsoft’s ordering theory through Microsoft’s Motion for Summary Judgment of NonInfringement. See, e.g., SAIC MTS at 31 (arguing “Microsoft seeks to advance new theories in its
motion for summary judgment.”); Def. MTS – SAIC Resp. at 5 (“It was Defendants who injected
untimely theories into this case by raising a new non-infringement theory in their summary
judgment motion and supporting it with new declarations from their fact and expert witnesses.”)
(emphasis omitted); MSFT MSJ NI – SAIC Resp. at 9 (asserting the ordering theory construction
was “first requested by Microsoft at the summary judgment phase”); OA Tr. at 19:15–17 (SAIC
Counsel: “[I]t was only with the motion for summary judgment, which included
declaration, that we got any details.”).
However, regardless of when SAIC alleges it first learned of Microsoft’s ordering theory,
each of SAIC’s assertions is incorrect and contrary to the record. The record contains a salmagundi
of evidence demonstrating Microsoft timely and adequately disclosed its ordering theory during
fact discovery and in accord with the Court’s schedule. During its June 1, 2022 hearing, this Court
warned all parties that it intended to “hold both sides to” the information contained in their final
contentions and interrogatory responses. June 1, 2022 Tr. at 69:16–17. Thus, Microsoft may rely
on the theories described in its July 21, 2022 Supplement, which Microsoft timely served

34

according to the Court’s June 14, 2022 Scheduling Order and prior to the end of fact discovery on
August 9, 2022. Id. at 69:19–20; see June 14, 2022 Scheduling Order at 2.
Indeed, SAIC’s assertion that Microsoft’s July 21, 2022 Supplement was somehow
untimely due to alleged timing restraints under Rule 34(b)(2)(a) is preposterous, which even a
cursory inspection of the record clearly evinces. This Court’s June 14, 2022 Scheduling Order
specifically granted SAIC the opportunity to serve additional written discovery regarding
Interrogatory No. 5 by August 1, 2022, irrespective of Rule 34(b)(2)(a) considerations. See June
14, 2022 Scheduling Order at 2; see also Rule 6(b) (noting that deadlines may be altered via court
order). Even more importantly, the Court specifically carved out a 30-day period for Microsoft to
respond to any new written discovery served by SAIC regarding Interrogatory No. 5,
“[n]otwithstanding [the August 9, 2022] fact discovery deadline.” Id. For SAIC to now assert that
it was precluded from pursuing additional written discovery regarding Microsoft’s July 21, 2022
Supplement due to the disclosure’s proximity to the August 9, 2022 fact discovery deadline defies
reason and is blatantly contradicted by the record.
2.

Sufficiency of Microsoft’s Disclosures

With the disclosure’s timeliness confirmed, the only question that remains is whether
Microsoft’s July 21, 2022 Supplement provided adequate notice of the ordering theory that
Microsoft raises in its Motion for Summary Judgment of Non-Infringement. See MSFT MSJ NI
at 33–42. This Court holds that it did.
Microsoft argues in its Motion for Summary Judgment of Non-Infringement that “the
Asserted Claims require the ‘identify’, ‘evaluate’, and ‘display’ operations be performed in that
order on pairs of the received images” and asserts the “Microsoft Accused Products never perform
the three basic operations in the order required by the claims on an incoming pair of images.”

35

SAIC contends that, “[e]ven if timely, Microsoft’s [July 21, 2022] final contentions are not
sufficient.” SAIC MTS at 30. According to SAIC, “Microsoft’s final contentions [did] not provide
any explanation of why it believes that the claims must be performed in a particular order,” nor
did Microsoft “cite to any documents or testimony” supporting its theory. Id. (emphasis in
original). This, according to SAIC, is despite that SAIC’s Interrogatory No. 5 “specifically
requested that any non-infringement theory be ‘described in detail’ and that Microsoft provide ‘an
identification by Bates number of all Documents [it] rel[ies] on to support such a non-infringement
defense.’” Id. (quoting SAIC’s First Set of Interrogatories to Microsoft Corp. (ECF No. 352-11)
at 3–4) (alterations in original). Thus, according to SAIC, Microsoft’s July 21, 2022 Supplement
“provide[d] an insufficient conclusory statement that the claims require an order of operation and
that the accused products do not meet this order.” SAIC MTS at 7.
In addition to challenging the alleged brevity of Microsoft’s July 21, 2022 Disclosure,
SAIC denounces what it views as the evolution of Microsoft’s ordering theory between fact
discovery and summary judgment briefing. SAIC MTS – SAIC Reply at 19 (“The
disclosed in Microsoft’s final supplemental response is distinct from the ‘ordering’ defense it now
asserts.”). Specifically, SAIC contends that Microsoft’s initial disclosures addressed a
, which asserted that
SAIC MTS – SAIC Reply at 19 (quoting one sentence from Microsoft’s July 21,

21, 2022 Supplement; Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1280 (Fed. Cir.
2012) (“Rule 26(e) requires that as theories mature and as the relevance of various items of
evidence changes, responses to interrogatories, and particularly contention interrogatories, be
corrected or supplemented to reflect those changes.”). Further, this Court afforded SAIC the
opportunity to serve additional written discovery devoted solely related to Microsoft’s July 21,
2022 Supplement before August 1, 2022, an opportunity that SAIC did not take. See June 14,
2022 Scheduling Order. Given these circumstances and Microsoft’s timeliness, Microsoft may
reasonably rely on the theories included in its July 21, 2022 Supplement, regardless of the theories
or information contained in any preceding disclosures.
37

2022 Supplement, which stated that

Now,
according to SAIC, Microsoft’s ordering theory has shifted and “reads the claims to require one
specific order of operations on one particular pair of frames.” Id. According to SAIC, because
Microsoft allegedly has so drastically altered its theory at the summary judgment phase, SAIC was
prevented from pursuing adequate discovery regarding Microsoft’s ordering theory expressed in
its Motion for Summary Judgment of Non-Infringement. See, e.g., OA Tr. at 15:3–5 (responding
to the Court’s inquiry as to why SAIC opted not to seek additional written discovery regarding
Microsoft’s July 21, 2022 Supplement, SAIC counsel responded that SAIC “didn’t know that [it]
needed to take discovery on a theory that [Microsoft] hadn’t disclosed at that time”).
SAIC repeatedly references the existence of the

Declaration as further proof that

Microsoft’s ordering theory has evolved between its July 21, 2022 Supplement and its summary
judgment briefing. See, e.g., SAIC MTS at 7 (arguing Microsoft “further change[d] [its ordering]
theory in the declaration from fact witness,

, submitted with Microsoft’s

motion for summary judgment”); id. at 31–32 (“The inclusion of [the

] declaration shows

that Microsoft could not support its summary judgment motion on what had previously been
disclosed in this case.”). SAIC asserts the information contained in the

Declaration was

not provided to SAIC during fact or expert discovery. See Def. MTS – SAIC Resp. at 8
provides six pages of discussion, none of which can be found in any of Microsoft’s noninfringement contentions.”); id. at 13 (arguing Microsoft “flipped the order contemplated by the
governing scheduling orders” by allegedly disclosing its ordering theory during expert discovery
and “only later providing the facts and theories to support that contention through” the

38

Declaration, “several months after the close of expert discovery”); OA Tr. at 17:18–20 (SAIC
Counsel: “What they do not disclose in these expert reports are any of the facts that were later
included in

declaration.”). SAIC further alleges Microsoft’s purported failure to

timely disclose its theory prevented SAIC from adequately preparing to depose

on

August 4, 2022 and from adequately responding to Microsoft’s ordering theory in the Bajaj
Opening Report. See, e.g., SAIC MTS at 33 (“Had Microsoft timely provided SAIC with what is
stated in [the

Declaration], SAIC could have prepared for its deposition of

to address these theories.”); id. at 32 (“SAIC should have had a full and fair opportunity to depose
on the subject matter of his declaration.”).
For many reasons, SAIC’s various arguments for why Microsoft’s disclosures proved
insufficient leave much to be desired. SAIC correctly notes that infringement contentions and
contention interrogatories allow parties to “narrow and sharpen the issues” or “crystallize” the
theories relevant to a case, “thereby confining discovery.” Woods v. DeAngelo Marine Exhaust,
Inc., 692 F.3d 1272, 1280 (Fed. Cir. 2012); see O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1364–65 (Fed. Cir. 2006) (“[D]iscovery is designed to allow the defendant to pin
down the plaintiff's theories of liability and to allow the plaintiff to pin down the defendant’s
theories of defense . . . .”). Yet, Microsoft’s disclosures met this burden. For example, Microsoft’s
July 21, 2022 Supplement methodically explained how its accused products do not infringe each
of the Asserted Claims and claim limitations. Microsoft’s disclosures provided substantial
discussion regarding how its devices do not meet the “identify,” “evaluate,” and “display” claim
limitations, and explicitly identified the claim limitations when doing so. See July 21, 2022
Supplement at 6–20. Indeed, Microsoft discloses the challenged excerpt to address precisely why
Microsoft’s devices do not infringe the “display” operation outlined in claim limitation (e):

39

because its products do not

July 21, 2022 Supplement at 19–20 (emphasis added).
Thus, Microsoft’s disclosure reflected a reasonable and logical flow through the claim limitations
at issue in this case and was not indicative of any hide-the-ball tactics, as SAIC suggests. See OA
Tr. at 16:16–21 (SAIC counsel complaining Microsoft disclosed its ordering theory through “one
sentence in 69 pages of contentions”).
Microsoft likewise cited its source code to support its ordering theory and identified
specific operations in the code that, at the time, it believed would demonstrate
See July 21, 2022 Supplement at 19–20. Indeed,
SAIC’s criticisms that Microsoft’s expert reports addressed different elements of Microsoft’s
source code than were originally disclosed in Microsoft’s July 21, 2022 Supplement are
unpersuasive. See SAIC MTS at 7 (“Defendants’ expert reports and the declaration submitted with
Microsoft’s non-infringement motions for summary judgment rely on different source code.”).
The precise nuances of a party’s theories frequently become clearer as information becomes
available through fact and expert discovery. See, e.g., Digit. Reg of Tex., LLC v. Adobe Sys., Inc.,
No. CV 12-01971-CW, 2014 WL 1653131, at *5 (N.D. Cal. Apr. 24, 2014) (“In patent litigation,
expert reports are expected to provide more information than is contained in infringement
contentions.”); Apple Inc. v. Samsung Elecs. Co., Ltd., No. 5:12-cv-0630-LHK-PSG, 2014 WL
12917334, at *1 (N.D. Cal. Jan. 9, 2014) (noting it is entirely permissible for expert reports to
clarify the theories previously set forth in contentions, as “[t]he scope of contentions and expert

40

reports are not . . . coextensive”) (internal quotations omitted); Fenner Invs., Ltd. v. HewlettPackard Co., No. 6:08–CV–273, 2010 WL 786606, at *2 (E.D. Tex. Feb. 26, 2010)
(acknowledging “[i]nfringement contentions need not disclose specific evidence nor do they
require a plaintiff to prove its infringement case,” but expert reports must include “a complete
statement of the expert’s opinions, the basis and reasons for them, and any data or other
information considered when forming them”) (internal quotations and citations omitted).
Importantly, Microsoft did not raise a new theory in its Motion for Summary Judgment of
Non-Infringement. Microsoft’s summary judgment motion reflects the same theory expressed in
Microsoft’s July 21, 2022 Supplement, which clearly states that its accused devices do not infringe
the “display” claim limitation because they do not

July 21, 2022 Supplement at 19–20 (emphasis added). This disclosure provided clear notice to
SAIC of Microsoft's theory that its accused products do not infringe because they do not perform
the “identify,” “evaluate,” and “display” operations in that order. See MSFT MSJ NI at 33 (“The
Plain Meaning of the Claims Requires That ‘Identify’, ‘Evaluate’, and ‘Display’ Be Performed in
That Order on the Same Pair of Digital Image Frames”) (emphasis in original). Microsoft indicated
its accused devices

July 21, 2022 Supplement at 20.
Said differently, Microsoft simply listed its

as an example of its argument that

Microsoft’s devices do not perform the “display” operation in the patent’s contemplated order,

41

which the July 21, 2022 Supplement itself makes clear. Id.
(emphasis added); OA Tr. at 22:17–18 (Microsoft
counsel noting the July 21, 2022 Supplement mentions

systems to add “factual context”

to its ordering theory). Thus, SAIC unreasonably places undue emphasis on a single sentence in
SAIC’s July 21, 2022 Supplement and ignores the broader context in which that sentence appears.
SAIC’s insinuation that Microsoft’s theory has morphed from focusing on

into

focusing on the processing of a single pair of frames merely reveals SAIC’s failure to grasp the
nuances of Microsoft’s ordering theory. It does not, however, raise any credible concerns
regarding the sufficiency of Microsoft’s prior disclosures.
Further, and most crucially, SAIC’s concerns over the
unfounded: SAIC had ample opportunity to question
incorporated in the

Declaration are
regarding the information

Declaration during his Rule 30(b)(6) deposition, and much of the

information contained in the

Declaration was disclosed to SAIC during fact discovery.

in Microsoft’s accused devices.
See

Decl. ¶ 1. The

Declaration, therefore,
Id. ¶ 2.

describes

how Microsoft’s devices use

Id. ¶¶ 2.a–2.b. The
Declaration further explains

42

its failure to disclose all of Dr. Bajaj’s opinions is both ‘substantially justified [or] harmless.’” Id.
at 17. Defendants allege they are prejudiced by SAIC’s introduction of the Supplemental Bajaj
Declaration, and such “prejudice cannot be cured,” or “at the very least, would require a setback
of nearly six months” to cure. Id. at 5.
SAIC does not dispute that the Supplemental Bajaj Declaration contained previously
undisclosed theories and even acknowledges that the Supplemental Bajaj Declaration qualifies as
a supplemental expert report. See Def. MTS – SAIC Resp. at 14 (“Dr. Bajaj supplemented his
expert report . . . .”). Instead, SAIC raises several arguments for why it was justified in submitting
the Supplemental Bajaj Declaration when it did so and how it did so. SAIC argues Defendants
“injected untimely theories into the case by raising a new non-infringement theory in their
summary judgment motion[s] and supporting it with new declarations from their fact and expert
witnesses.” Id. at 5 (emphasis omitted); id. at 6 (noting the Supplemental Bajaj Declaration
“responds only to the new evidence Defendants relied on in their summary judgment motions”).
SAIC criticizes Defendants for belatedly raising new claim construction theories at the summary
judgment phase and challenges the declarations of Dr. Villasenor,

, and Jason

Coffman that Microsoft and L3 included with their summary judgment motions. See id. at 6–7,
14 (“Dr. Bajaj supplemented his expert report because Microsoft served a new declaration from
and Dr. Villasenor, and L3 served a new declaration from Mr. Coffman with their

witness depositions to a maximum of seven hours. June 14, 2022 Scheduling Order at 2–3. In
relevant part, the Court noted that “[t]he parties may only exceed these limits by showing good
cause in a motion filed with this Court.” Id. at 3. In other words, if a party wished to exceed the
70-hour or 7-hour time limits for deposition testimony, that party was required to file a motion and
demonstrate good cause to receive such an extension. Therefore, though this Court may agree the
Supplemental Bajaj Declaration was procedurally lacking, the deficiency does not emanate from
such a purported violation of this Court’s June 14, 2022 Scheduling Order. See supra Section
II(C)(b); Def. MTS – SAIC Resp. at 15–16.
48

motions for summary judgment.”); Declaration of John Villasenor, dated February 24, 2023 (ECF
Nos. 343-9, 344-3) (Villasenor Declaration or Villasenor Decl.);

Decl.; Declaration of

Jason Coffman, dated February 22, 2023 (ECF No. 344-19) (Coffman Declaration or Coffman
Decl.). SAIC claims that “but for the new declarations, Dr. Bajaj would not have needed to submit
his declaration in response.” Def. MTS – SAIC Resp. at 16.
This Court agrees with Defendants. As an initial matter, SAIC failed to meet its disclosure
requirements under Rules 26(a)(2) and 26(e) by submitting the Supplemental Bajaj Declaration as
an exhibit to its brief opposing Microsoft’s Motion for Summary Judgment of Non-Infringement.
Rule 26(a)(2)(B)(i) requires that an expert’s report contain “a complete statement of all opinions
the witness will express and the basis and reasons for them.” Rule 26(a)(2)(B)(i). Thus, by the
Court’s September 30, 2022 deadline for opening expert reports pursuant to Rule 26(a)(2)(B),
SAIC, as the party carrying the burden to prove infringement in this action, was obligated to serve
an opening expert report that encompassed the totality of its infringement theories. See September
14, 2022 Scheduling Order at 1 (extending the due date for opening expert reports on consent to
September 30, 2022). By raising arguments not previously included in the Bajaj Opening Report
or the Bajaj Appendix A, the Supplemental Bajaj Declaration reveals SAIC’s failure to comply
with Rule 26(a)(2)(B)’s requirement to provide “a complete statement of all opinions the witness
will express.” Rule 26(a)(2)(B)(i).
While Rule 26(e)(1) creates a duty for parties to supplement an expert’s report, parties
may only do so (1) “in a timely manner if the party learns that in some material respect the
disclosure or response is incomplete or incorrect, and if the additional or corrective information
has not otherwise been made known to the other parties during the discovery process or in writing,”
or (2) “as ordered by the court.” Rule 26(e)(1). Accordingly, a supplemental report such as the

49

Supplemental Bajaj Declaration would only have been acceptable if it had timely responded to
new facts that called into question the accuracy or completeness of the Bajaj Opening Report. See
Rule 26(e)(1). A party may not sua sponte misapply Rule 26(e)(1) to revise and strengthen an
expert’s previously disclosed opinions to deflect credible challenges from an opponent. See, e.g.,
Luke v. Fam. Care and Urgent Med. Clinics, 323 F. App’x 496, 500 (9th Cir. 2009) (“Rule 26(e)
creates a ‘duty to supplement,’ not a right. Nor does Rule 26(e) create a loophole through which
a party who submits partial expert witness disclosures, or who wishes to revise her disclosures in
light of her opponent’s challenges to the analysis and conclusions therein, can add to them to her
advantage after the court’s deadline for doing so has passed.”). Yet, that is precisely what SAIC
did.
The Supplemental Bajaj Declaration does not correct or make complete Dr. Bajaj’s existing
infringement arguments; it presents entirely new, substantive opinions regarding infringement that
were never previously presented. Indeed, SAIC goes so far as to use the Supplemental Bajaj
Declaration to introduce a doctrine of equivalents theory of infringement that, by SAIC’s own
admission, was never raised at any point during fact or expert discovery. See OA Tr. at 35:14–18
(The Court: “Has SAIC ever raised the doctrine of equivalents theory and the reasoning for that
theory prior to the Bajaj supplemental report? And if so, where?” SAIC Counsel: “We did not,
Your Honor.”). Allowing the Supplemental Bajaj Declaration to remain in the record would
permit SAIC to pivot its entire theory of infringement at the summary judgment phase. Such a
circumstance would be highly irregular and inappropriate where, as here, sophisticated parties
have vigorously litigated this action for over six years. Accordingly, to permit SAIC’s additional
disclosures to remain in the record, SAIC must demonstrate it was “substantially justified” in
presenting the Supplemental Bajaj Declaration or that the Supplemental Declaration was

50

“harmless.” See Rule 37(c)(1); Scott Timber, 93 Fed. Cl. at 226 (noting “the burden is on the
offending party to show that its violation was either justified or harmless”). SAIC has failed to
meet this burden.
SAIC contends it was justified in serving these new opinions during summary judgment
due to the allegedly untimely disclosure of new information by Defendants, specifically
Microsoft’s and L3’s ordering theories of non-infringement. Def. MTS – SAIC Resp. at 5. The
ordering theories, however, cannot justify SAIC’s untimely supplemental expert report, as
Microsoft and L3 clearly and sufficiently disclosed these theories to SAIC during fact discovery.
As previously discussed, Microsoft timely disclosed its ordering theory in its July 21, 2022
Supplement. See supra Section II(C)(a)(1). Likewise, Defendants note that “L3 disclosed during
fact discovery that in the ENVG-B system,

Def. MTS at 12 (quoting L3’s Supplemental Response
to SAIC’s Interrogatory No. 7 (ECF Nos. 359-7, 361-15, 367-8, 376-1) 32 at 9). Notably, however,
SAIC does not to move to strike L3’s allegedly untimely ordering theory. See SAIC MTS; OA
Tr. at 30:17–19 (when questioned by the Court why SAIC did not move to strike L3’s ordering
arguments, SAIC counsel acknowledged SAIC “responded in the summary judgment motion as
opposed to separately filing a motion to strike”). Instead, SAIC opted to slip a supplemental expert
report into the record as an exhibit attached to a summary judgment brief, without seeking leave

32

L3’s Supplemental Response to SAIC’s Interrogatory No. 7 appears in the record under various
ECF numbers. See ECF Nos. 359-7, 361-15, 367-8, 376-1. Accordingly, for consistency in this
opinion, all page number citations for L3’s Supplemental Response to SAIC’s Interrogatory No. 7
reference the document submitted through ECF No. 367-8.
51

of court. Thus, even if, hypothetically, Microsoft or L3 had untimely disclosed their ordering
theories, the way SAIC attempted to remedy L3’s allegedly delayed disclosure is inappropriate.
Indeed, such conduct fails to comply with the procedures the parties agreed to undertake
in the event any party raised new theories after discovery. See Def. MTS at 14. In a Joint Status
Report (JSR) filed December 13, 2022, SAIC asserted that “Defendants disclosed new noninfringing alternative and new non-infringement theories in expert rebuttal reports on infringement
and damages that were not previously disclosed during fact discovery.” JSR, dated December 13,
2022 (ECF No. 332) at 5. After receiving the parties’ JSR, the Court held a status conference on
December 14, 2022, during which the Court discussed scheduling related to any potential Rule 37
motion practice. See Status Conference Transcript, dated December 14, 2022 (ECF No. 336) at
18:9–19–22. The parties agreed to meet and confer regarding how they would address these
allegedly newly raised non-infringement theories and non-infringing alternatives. See JSR, dated
January 27, 2023 (ECF No. 337) at 2; see Def. MTS at 14. According to the parties’ next JSR,
dated January 27, 2023, “the Parties conferred about the procedures regarding motions to strike
expert reports, or portions thereof, and hereby propose, subject to the Court’s approval that:
Motions to strike expert opinions, or portions thereof, may be filed as Daubert motions or motions
in limine, as appropriate.” JSR, dated January 27, 2023 at 2.
At no point did SAIC indicate, either to Defendants or to the Court, that it planned or sought
to prepare and serve supplemental expert reports on these issues. See id.; Def. MTS at 14 (“SAIC
never alerted Defendants or the Court that it was going to, let alone wanted to, have its expert
submit additional new opinions despite ample opportunity.”). This Court has discretion in
conducting and overseeing the discovery process. Florsheim Shoe Co., Div. of Interco, Inc. v.
United States, 744 F.2d 787, 797 (Fed. Cir. 1984) (“Questions of the scope and conduct of

52

discovery are, of course, committed to the discretion of the trial court.”); Adkins v. United States,
856 F.3d 914, 916 n.2 (Fed. Cir. 2017) (citing Florsheim, 744 F.2d at 797 and acknowledging that
discovery issues like a motion to compel discovery are “committed to the discretion of the trial
court”). As such, at minimum SAIC should have sought leave and notified the Court of its desire
to supplement the record in this manner, even if Microsoft’s and L3’s arguments were untimely
(which, they are not).
Additionally, the veracity of SAIC’s timeliness concerns is itself belied by the content of
the Supplemental Bajaj Declaration, as the opinions expressed in the Declaration are not cabined
to merely addressing the allegedly late-disclosed ordering theory. See Def. MTS – Def. Reply at
12 (citing Supp. Bajaj Decl. ¶¶ 65–72) (“Moreover, Dr. Bajaj’s new declaration is not aimed at
addressing only the purportedly new facts and theories. . . . Specifically, Dr. Bajaj introduces
entirely new opinions . . . regarding the ‘overlay’ claim element and the requirement in the asserted
claims that the identify step is based on motion data.”); Def. MTS – SAIC Resp. at 10 n.4. For
example, SAIC acknowledges that the Supplemental Bajaj Declaration “included a few
supplemental opinions and pictures responding to L3’s ‘overlay’ non-infringement argument that
were consistent with the opinions presented in Dr. Bajaj’s original report and that were offered in
response to L3’s positions on this issue that were more fully developed and disclosed after Dr.
Bajaj had submitted his opening report in order to crystalize the disputed issues for the Court.”
Def. MTS – SAIC Resp. at 10 n.4. However, SAIC has not disputed the timeliness of L3’s
disclosures related to its non-infringement theory centered on “overlay.” SAIC has likewise failed

53

circumstances are similar for the Coffman Declaration. SAIC deposed Mr. Coffman, L3’s Rule
30(b)(6) witness, on July 29, 2022, after L3 had already served its interrogatory responses, but
failed to question Mr. Coffman regarding L3’s ordering theory of non-infringement during his
deposition. See Def. MTS at 12; see Coffman Depo. Tr. In stark contrast, due to the timing of
SAIC’s disclosure at the summary judgment stage, Defendants never had a meaningful opportunity
to depose Dr. Bajaj on the new infringement theories expressed in his Supplemental Bajaj
Declaration.
SAIC likewise attempts to argue that, like SAIC, Microsoft also attached a substantive
declaration from its own expert, Dr. John Villasenor, in support of its Motion for Summary
Judgment of Non-Infringement. See, e.g., Def. MTS – SAIC Resp. at 8 (arguing Microsoft
submitted a “declaration from their expert witness, Dr. John Villasenor, to confirm that he agrees
with the way Microsoft has recast the opinions in his expert report”). However, SAIC’s assertions
mischaracterize the nature of Dr. Villasenor’s Declaration. Contrary to SAIC’s suggestions, the
Villasenor Declaration does not contain any new substantive material or arguments regarding
Microsoft’s non-infringement theories. See generally Villasenor Decl. Instead, it merely provides
a recitation of Dr. Villasenor’s credentials and qualifications in the field and points to Dr.
Villasenor’s various expert reports he prepared and served during expert discovery in accordance
with the Court’s schedule. See Villasenor Decl. ¶ 7 (describing the various reports and appendices
Dr. Villasenor has prepared throughout the course of this litigation). 34 A simple review of the
record reveals that SAIC’s “good for the goose, good for the gander” argument must fail. Indeed,

34

Despite its clear indignation over the inclusion of the Villasenor Declaration, SAIC neither
references nor challenges a similar non-substantive declaration of Microsoft’s source code expert,
Dr. Farid, that was likewise attached as an exhibit to Microsoft’s Motion for Summary Judgment
of Non-Infringement. See Declaration of Hany Farid, dated February 24, 2023 (ECF No. 343-12).
56

inclusion of the Villasenor Declaration likewise does not justify SAIC’s decision to submit a
substantive supplemental expert report, expressing entirely new theories of infringement, via
summary judgment briefing.
For these reasons, this Court remains unconvinced by SAIC’s proffered explanations for
its conduct and concludes SAIC has failed to demonstrate the Supplemental Bajaj Declaration was
“substantially justified or harmless.” See Rule 37(c)(1). Accordingly, this Court must decide
which sanction, if any, is appropriate to address SAIC’s disclosure failures based on the various
factors. See MicroStrategy, 429 F.3d at 1357; Banks, 75 Fed. Cl. at 298–99. As an initial matter,
based on the arguments expressed in SAIC’s briefing, this Court does not doubt the willfulness of
SAIC’s decision to supplement the record through the Supplemental Bajaj Declaration. See, e.g.,
Def. MTS – SAIC Resp. at 14 (“Dr. Bajaj supplemented his expert report because Microsoft served
a new declaration from

and Dr. Villasenor, and L3 served a new declaration from

Mr. Coffman with their motions for summary judgment.”). Indeed, SAIC’s counsel is highly
sophisticated, and SAIC’s decision to serve such a supplemental report by attaching it as an exhibit
in a response brief, rather than moving for leave of court, suggests even SAIC may have had
concerns over the propriety and timing of the Supplemental Bajaj Declaration and its contents.
This Court likewise agrees with Defendants that SAIC’s conduct has clearly surprised and
prejudiced Defendants. See Def. MTS at 5, 19–20. Through the Supplemental Bajaj Declaration,
SAIC filed a supplemental expert report on March 29, 2023, nearly four months after the December
13, 2022 close of expert discovery. See Supp. Bajaj Decl.; September 14, 2022 Scheduling Order
at 2. Such prejudice cannot be meaningfully cured without reopening expert discovery to (1) allow
Defendants’ experts to serve their own supplemental rebuttal reports, and (2) allow Defendants to
depose Dr. Bajaj regarding his new theories. Def. MTS at 5, 19–20. Furthermore, Defendants

57

would likewise need additional time to update their summary judgment briefing to respond to Dr.
Bajaj’s new infringement positions. Id. Each of these tasks would substantially delay the progress
of this case and prove exceptionally disruptive to both the Court’s trial schedule and disposition
of summary judgment in this case.
This case is now six years old and has been before four different judges of this court. As
noted, the parties have vigorously litigated this case through their sophisticated counsel. Discovery
is closed, and the case must resolve either via trial or motion practice. Indeed, it is SAIC who has
repeatedly expressed its desire to promptly proceed to trial in this action. See, e.g., JSR, dated
December 13, 2022 (ECF No. 332) at 4 (expressing SAIC’s desire for “efficient resolution,”
asserting mediation offers a means to reach resolution “without delaying progress toward trial,”
and refusing to consent to a stay pending mediation because “[t]his case has been pending for over
5 years”); Status Conference Transcript, dated December 14, 2022 (ECF No. 336) at 21:4–15 (in
discussing when this Court should set a trial date, SAIC counsel indicating SAIC “would like to
push [the case] forward” and emphasizing “the case has been going on five years”). SAIC cannot
now credibly insinuate delay for the purpose of keeping the Supplemental Bajaj Declaration in the
record.
Importantly, SAIC has had ample opportunity prior to submission of the Supplemental
Bajaj Declaration to develop and disclose alternative theories of infringement against Microsoft
and L3. See generally June 14, 2022 Scheduling Order; September 14, 2022 Scheduling Order;
Bajaj Op. Rpt.; Bajaj App. A. Further, many arguments and theories remain available to SAIC
apart from those articulated in the Supplemental Bajaj Declaration. Thus, should this Court impose
a sanction that would render the theories disclosed in the Supplemental Bajaj Declaration
unavailable to combat Microsoft’s and L3’s non-infringement theories, such an exclusion would

58

not rise to “de facto” dismissal of SAIC’s case. Ingalls Shipbuilding, 857 F.2d at 1451 (“[A] trial
court’s discretion to impose sanctions is not unfettered, especially when the de facto result of the
sanction is dismissal.”); Securiforce Int'l Am., LLC v. United States, 127 Fed. Cl. 386, 396 (2016)
(quoting Ingalls Shipbuilding, 857 F.2d at 1451).
Based on these considerations, and in light of the prejudice and delay SAIC’s untimely
submission will cause, this Court holds that the sanction of exclusion of the Supplemental Bajaj
Declaration is appropriate in this case and is proportionate to SAIC’s conduct. See, e.g., Cheese
Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1354–55 (Fed. Cir. 2013)
(holding a trial court did not abuse its discretion in striking portions of a supplemental expert
declaration that a party served two months after the close of discovery, after the expert had been
deposed, and after the opposing party had already filed a motion for summary judgment); O2
Micro, 467 F.3d at 1368–69 (affirming trial court’s decision to exclude a party’s supplemental
expert reports that were served after the discovery deadline and introduced new infringement
theories into the case).
D.

Conclusion – Motions to Strike

For the foregoing reasons, this Court DENIES SAIC’s Motion to Strike (ECF No. 352),
solely as it pertains to Microsoft’s non-infringement theory, and GRANTS Defendants’ Motion
to Strike (ECF No. 377). The Supplemental Bajaj Declaration (ECF No. 362-3) is accordingly
STRICKEN from the record. SAIC is precluded from relying on any opinions expressed in the
Supplemental Bajaj Declaration, both in opposing Defendants’ summary judgment motions and at
trial.

59

III.

Motions for Summary Judgment of Invalidity Based on Indefiniteness
Microsoft contends it is entitled to summary judgment on the basis that the ’230 patent is

invalid based on indefiniteness. See generally MSFT MSJ Inv. Specifically, Microsoft contends
that the terms “represent,” “potentially represent,” and “overlays a corresponding region” found
in the ’230 patent’s three independent claims are indefinite, rendering the ’230 patent invalid. See,
e.g., id. at 28. Similarly, the Government and L3 jointly move for summary judgment of invalidity
based on indefiniteness. See generally L3/Gov. MSJ Inv. The Government and L3’s Joint Motion
is brief: it adopts the arguments Microsoft raises in its own Motion and adds limited commentary
to specifically address indefiniteness concerns regarding the ’230 patent claims asserted against
L3 and the Government. See id. at 2 (“[T]he Government and L3 incorporate by reference the
arguments in Defendant-Intervenor Microsoft Corporation’s Motion for Summary Judgment of
Invalidity Based on Indefiniteness . . . . The deficiencies identified in Microsoft’s Motion apply
with equal force to each of the claims asserted against the Government and L3, including claims
1, 5, 12, 18, 29, 30, 37, and 39.”). 35
For the reasons addressed below, Microsoft’s Motion for Summary Judgment of Invalidity
Based on Indefiniteness (ECF No. 339) is DENIED. The Government and L3’s Joint Motion for
Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 342) is likewise DENIED.

35

Similarly, in responding to the Government and L3’s Joint Motion, SAIC adopts the arguments
included in its Response to Microsoft’s Motion for Summary Judgment addressing indefiniteness
and provides limited commentary to rebut the unique arguments raised in the Government and
L3’s Motion. See L3/Gov. MSJ Inv. – SAIC Resp. at 2 (“The Government and L3’s follow-on
motion should be denied for the same reasons as those articulated in SAIC’s opposition to
Microsoft’s motion for summary judgment . . . . SAIC incorporates by reference the arguments in
its opposition to Defendant Microsoft’s motion for summary judgment as though fully set forth
herein.”).
60

A.

Background – Motions for Summary Judgment of Invalidity Based on
Indefiniteness

As noted, at its inception, this action involved four patents, all of which belonged to the
SERVAL family of patents: U.S. Patent Nos. 7,787,012 (the ’012 patent), 8,817,103 (the ’103
patent), 9,229,230 (the ’230 patent), and 9,618,752 (the ’752 patent). See Compl. ¶ 2, 37. In its
August 6, 2021 Markman Opinion, this Court construed the terms “in registration with” and
“registering” recited in certain claims from the ’012 patent, 36 the ’103 patent, 37 the ’752 patent, 38
36

Claim 1(3) of the ’012 patent recites:
1. A method of registering video images with an underlying visual field comprising
the steps of . . . . (3) displaying the video images in positions on the transparent
display that overlay portions of the visual field represented by the displayed video
images, wherein boundaries of the displayed video images are in registration with
boundaries of portions of the visual field represented by the displayed video images.

’012 patent at 9:63–10:10 (emphasis added). Additionally, Claim 17(4) of the ’012 patent recites:
17. A method of registering video images with an underlying visual field
comprising the steps of . . . . (4) registering the portion of the video feed with the
underlying visual field
Id. at 10:48–60 (emphasis added).
37

Claim 1 of the ’103 patent recites:
1. A system comprising . . . a computer adapted to receive sensor data from the first
and second orientation sensors, to receive the video feed from the video camera,
and to display the video images, on the transpar[e]nt display and based on the
received sensor data, in positions that overlay portions of the visual field
represented by the displayed video images wherein boundaries of the displayed
video images are in registration with boundaries of portions of the visual field
represented by the displayed video images, and wherein the computer is adapted to
determine a source orientation of the video camera, and determine a display
orientation of the transparent display.

’103 patent at 10:6–30.
38

Claims 1, 7, and 13 of the ’752 patent each recite the phrase “in registration with” in system,
method, and non-transitory machine-readable medium claims, respectively. In each of these
claims, the pertinent claim limitation states as follows:
61

and ’230 patent. 39 See Markman Op., 154 Fed. Cl. at 634–39. The Court ruled that the terms “in
registration with” and “registering” were indefinite because “the patents fail to provide objective

displaying at least a portion of the first image and the selected part of the second
image such that the selected part of the second image replaces the selected part of
the first image and is in registration with regions of the first image surrounding the
selected part of the first image.
’752 patent at 25:2–34 (claim 1) (emphasis added) (“A system, comprising . . . .”); id. at 26:19–45
(claim 7) (emphasis added) (“A method comprising . . . .”); id. at 27:31–59 (claim 13) (emphasis
added) (“A non-transitory machine-readable medium having machine executable instructions for
performing a method comprising . . . .”).
39

Claim 3 of the ’230 patent recites:
3. The system of claim 2, wherein operation (c) includes using the received motion
data to determine an amount by which the second video source image portion
should be rotated relative to the first video source image portion so that the second
video source image portion is in registration with areas of the first video source
image portion adjacent to the corresponding region, and operation (d) includes
determining, based on a phase shift of the first video source image relative to the
second video source image, a rotation of the second video source image region
relative to the first video source image.

’230 patent at 24:58–25:3 (emphasis added). Additionally, claim 17 of the ’230 patent recites:
17. The method of claim 16, wherein step (c) includes using the received motion
data to determine an amount by which the second video source image portion
should be rotated relative to the first video source image portion so that the second
video source image portion is in registration with areas of the first video source
image portion adjacent to the corresponding region, and step (d) includes
determining, based on a phase shift of the first video source image relative to the
second video source image, a rotation of the second video source image region
relative to the first video source image.
’230 patent at 26:52–62 (emphasis added). Finally, claim 31 of the ’230 patent recites:
31. The non-transitory machine-readable medium of claim 30, wherein step (c)
includes using the received motion data to determine an amount by which the
second video source image portion should be rotated relative to the first video
source image portion so that the second video source image portion is in
registration with areas of the first video source image portion adjacent to the
corresponding region, and step (d) includes determining, based on a phase shift of
62

criteria for a [person of ordinary skill in the art (POSITA)] to determine with reasonable certainty
when registration is accomplished.” Id. at 634.
B.

Applicable Legal Standards – Motions for Summary Judgment of Invalidity
Based on Indefiniteness

Rule 56 states that a party “may move for summary judgment, identifying each claim or
defense . . . on which summary judgment is sought,” and the Court shall grant summary judgment
“if the movant shows that there is no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Rule 56(a). The movant bears the initial burden of
“informing the district court of the basis for its motion” and demonstrating “the absence of a
genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary
judgment is appropriate when, “drawing all justifiable inferences in the non-movant’s favor, ‘there
is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.’” Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338–39 (Fed. Cir. 2016)
(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)). Challenges to a patent’s
invalidity, including invalidity based on indefiniteness, may be addressed at the summary
judgment phase. See, e.g., Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir.
2015) (on remand from Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014))
(considering district court’s grant of summary judgment based on indefiniteness); Ibormeith IP,
LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376 (Fed. Cir. 2013) (affirming district court’s
decision granting summary judgment for invalidity based on indefiniteness).

the first video source image relative to the second video source image, a rotation of
the second video source image region relative to the first video source image.
’230 patent at 28:44–56 (emphasis added).
63

The Federal Circuit has made clear that “[i]n the face of an allegation of indefiniteness,
general principles of claim construction apply.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1332 (Fed. Cir. 2010) (quoting Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir.
2007)) (alterations in original) (internal citations omitted). Issues of indefiniteness, like claim
construction, are questions of law that may sometimes require subsidiary factfinding by the trial
court. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1346 (Fed. Cir. 2022)
(“Definiteness is a question of law . . . .”); Cox Commc’ns., Inc. v. Sprint Commc’n. Co. LP, 838
F.3d 1224, 1288 (Fed. Cir. 2016) (“The ultimate conclusion that a claim is indefinite under 35
U.S.C. § 112, ¶ 2 is a legal conclusion, which we review de novo. . . . As in claim construction,
we review a district court's underlying factual determinations for clear error.”) (citing Eidos
Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1364 (Fed. Cir. 2015) and Teva Pharms.
USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 330–31 (2015)); Akzo, 811 F.3d at 1343 (citing Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)) (“Indefiniteness is a question
of law that we review de novo . . . subject to a determination of underlying facts.”); Icon Health &
Fitness, Inc. v. Polar Electro Oy, 656 F. App’x 1008, 1013 (Fed. Cir. 2016) (quoting Biosig Instr.,
Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015)) (citing Teva Pharms., 574 U.S. at 326)
(acknowledging that a court’s legal conclusions regarding indefiniteness and claim construction
are both questions of law that may “have factual underpinnings”). “Any fact critical to a holding
on indefiniteness . . . must be proven by the challenger by clear and convincing evidence.” Cox
Comms., 838 F.3d at 1228 (quoting Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir.
2003)) (internal quotation marks omitted); see SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351,
1357 (Fed. Cir. 2006) (“[A] moving party seeking to invalidate a patent at summary judgment
must submit such clear and convincing evidence of facts underlying invalidity that no reasonable

64

jury could find otherwise.”); Apple Comput., Inc. v. Articulate Sys., Inc., 234 F.3d 14, 20 (Fed.
Cir. 2000) (“Summary judgment of invalidity . . . must be predicated on facts established by clear
and convincing evidence.”).
Every patent’s specification must “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶ 2. 40 Accordingly, a patent is deemed invalid for indefiniteness “if its claims, read
in light of the specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus v. Biosig
Instruments, Inc., 572 U.S. 898, 901 (2014); id. at 908 (“[D]efiniteness is to be evaluated from the
perspective of someone skilled in the relevant art.”). Said differently, “[w]hether a claim is invalid
for indefiniteness requires a determination whether those skilled in the art would understand what
is claimed when the claim is read in light of the specification.” Takeda Pharm. Co. Ltd. v. Zydus
Pharms. USA, Inc., 743 F.3d 1359, 1366 (Fed. Cir. 2014) (quoting Morton Int'l, Inc. v. Cardinal
Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)); Enzo Biochem, 599 F.3d at 1332 (noting
indefiniteness inquiries, like claim construction, “involve[] consideration of primarily the intrinsic
evidence, viz., the claim language, the specification, and the prosecution history”) (internal
quotations omitted). “The internal coherence and context assessment of the patent, and whether it
conveys claim meaning with reasonable certainty, are questions of law.” Sonix Tech. Co. Ltd. v.

40

Paragraph 2 of 35 U.S.C. § 112 was replaced with newly designated 35 U.S.C. § 112(b) when
§ 4(c) of the America Invents Act (“AIA”) took effect on September 16, 2012. See Pub.L. No.
112–29. The parties agree that this case involves the pre-AIA version of 35 U.S.C. § 112, as the
application resulting in the ’230 patent was filed before that date. See Markman Op., 154 Fed. Cl.
at 613 n.9 (citing the Markman Hearing Transcript, dated December 15, 2020 (ECF No. 159) at
98:9–15).
65

Publ’ns Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017) (quoting Teva Pharm. USA, Inc. v.
Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015)).
However, “[a]s the Supreme Court explained in Nautilus, language has ‘inherent
limitations.’” Niazi Licensing, 30 F.4th at 1346 (quoting Nautilus, 572 U.S. at 909). Though “a
patent must be precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the
public of what is still open to them,’ . . . ‘the certainty which the law requires in patents is not
greater than is reasonable, having regard to their subject-matter.’” Nautilus, 572 U.S. at 899
(alteration in original) (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996)
and Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 270 (1916)); id. at 910 (acknowledging the
indefiniteness standard “mandates clarity, while recognizing that absolute precision is
unattainable”). Thus, “a patentee need not define his invention with mathematical precision in
order to comply with the definiteness requirement.” Niazi Licensing, 30 F.4th at 1347 (quoting
Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 1359 (Fed. Cir. 2019))
(internal quotations omitted); Sonix Tech., 844 F.3d at 1377 (same).
C.

Discussion – Motions for Summary Judgment of Invalidity Based on
Indefiniteness

Microsoft 41 alleges that the ’230 patent is invalid because the terms “represents,”
“potentially represents,” and “overlays a corresponding region” that are found in claims 1, 15, and
29 are indefinite (collectively, the Challenged Terms). MSFT MSJ Inv. at 21–22. Claim 1, which

41

As L3 and the Government have adopted Microsoft’s arguments regarding indefiniteness, this
Court frames its discussion around the arguments raised in Microsoft’s Motion and separately
addresses any unique arguments raised in the Government and L3’s Joint Motion. See infra
Section III(C)(d).
66

the parties agree is representative on the issue of indefiniteness, 42 recites the Challenged Terms as
follows:
(c) identify, based on the received motion data, a part of a first video source image
that potentially represents a portion of the external environment represented in a
part of a second video source image;
(d) evaluate, based on a comparison of data from the first and second video source
images, the identification performed in operation (c); and
(e) display at least a portion of the first video source image and at least a portion of
the second video source image such that the second video source image portion
overlays a corresponding region of the first video source image portion, wherein
the corresponding region represents a portion of the external environment
represented in the second video source portion.
’230 Patent at 24:38–51 (emphasis added).
Microsoft raises two arguments in support of its position that the Challenged Terms are
indefinite. First, Microsoft suggests that these terms “suffer from the same defects that led the
Court to hold [the terms] ‘in registration with’ [and] ‘registering’ to be indefinite” in its claim
construction opinion. MSFT MSJ Inv. at 22; see Markman Op., 154 Fed. Cl. at 634–39. Thus,
Microsoft argues this Court should apply the same reasoning to the Challenged Terms as it did in
deeming the Registration Terms indefinite. See, e.g., MSFT MSJ Inv. – MSFT Reply at 7–8
(“Thus, the Court’s findings of indefiniteness of the ‘registration’ terms are instructive to a finding
that the ’230 patent specification fails to provide any objective criteria to determine with
reasonable certainty whether the claimed representation and overlay is accomplished.”). Second,

42

See MSFT MSJ Inv. – SAIC Resp. at 14 (“Solely for purposes of responding to this motion on
indefiniteness, SAIC agrees that the limitations of Claim 1 are exemplary of the challenged
limitations in each of asserted claims.”); Villasenor Op. Rpt. ¶ 229 (“Claim 1 of the ’230 Patent
includes the following limitations that are relevant for my opinion on indefiniteness . . . Claims 15
and 29 include substantively identical limitations. Therefore, while I refer to claim 1 in my
discussion below for brevity, my opinion applies in equal force to claims 15 and 29 and their
dependent claims.”).
67

Microsoft asserts that the ’230 patent is indefinite because it does not disclose any objective
criteria, methodology, or other description “by which to measure or know whether the [Challenged
Terms] are satisfied.” MSFT MSJ NI at 28; see id. at 28–29 (arguing the ’230 patent “(1) fails to
disclose parameters for acceptable degrees of error or inform a POSITA the extent of alignment
of the overlaid images required by the claims; and (2) does not contain any objective criteria or
other description by which to measure or know whether the [Challenged Terms] are satisfied”). 43
Central to this argument is Microsoft’s position that the Challenged Terms are terms of degree that
are “context-dependent and measurable.” Id. at 27–28.
Based on the ’230 patent’s intrinsic evidence, extrinsic evidence, and relevant case law,
this Court holds that Microsoft has failed to provide clear and convincing evidence to support its
Motion. Accordingly, this Court finds that the Challenged Terms are not indefinite.
a.

Prior Holdings Regarding the Registration Terms Are Not Controlling
as Pertaining to the Challenged Terms

Microsoft’s arguments equating the Challenged Terms and the Registration Terms
invalidated in this Court’s Markman Opinion are inapposite. Microsoft asserts this Court should
construe the Challenged Terms as indefinite by applying the same reasoning it applied in its
Markman Opinion when construing the terms “in registration with” and “registering.” Id. at 5,
20–25; Markman Op., 154 Fed. Cl. at 634–39. According to Microsoft, though “the asserted
claims of the ’230 patent use the word ‘represent’ rather than ‘registration,’ [] they refer to the

43

See MSFT MSJ Inv. at 29 (“[T]he crucial aspect of the alleged invention is evaluating in claim
element (d) the ‘potential representation’ identified in claim element (c) to ensure that it is a
‘corresponding region’ and an actual ‘representation,’ which is displayed in claim element (e).
Yet, the ’230 patent fails to provide a POSITA with objective criteria for evaluating whether and
when a ‘potential representation’ is accurate enough to be considered a ‘corresponding region’ and
an actual ‘representation’ that is to be displayed by the system of claim 1 of the ’230 patent.”)
(emphasis omitted).
68

same concept.” MSFT MSJ Inv. at 5 (“The remaining asserted claims require overlaying one
image on top of another such that the two images ‘potentially represent’ or ‘represent’ the same
portion of the external environment in the area of overlap. ‘Representation’ thus refers to the same
indefinite idea as ‘registration.’”); id. at 15 (“Whether one image ‘potentially represents’ or
‘represents’ a portion of another, and whether one image has a ‘corresponding region’ in another,
all refer to the same concept [as ‘registration’].”). Thus, according to Microsoft, this Court’s
previous holdings on indefiniteness pertaining to the Registration Terms should inform how this
Court interprets the Challenged Terms. MSFT MSJ Inv. – MSFT Reply at 7–8 (“Thus, the Court’s
findings of indefiniteness of the ‘registration’ terms are instructive to a finding that the ’230 patent
specification fails to provide any objective criteria to determine with reasonable certainty whether
the claimed representation and overlay is accomplished.”). However, an inspection of the intrinsic
evidence and the record reveals that this Court’s previous holdings on indefiniteness are not
dispositive on the present issue.
“Different claim terms are presumed to have different meanings.” MicroStrategy Inc., v.
Bus. Objects Americas, 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v.
Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any
evidence to the contrary, we must presume that the use of these different terms in the claims
connotes different meanings.”). Simply put, “represent” and “registration” are different terms with
different meanings that, accordingly, invoke different definiteness considerations. The intrinsic
record suggests a POSITA would agree the Challenged Terms and the Registration Terms convey
different meanings and merit their own definiteness analyses. For example, none of the ’230
patent’s independent claims, which contain the Challenged Terms and are asserted in this action,

69

reference any of the Registration Terms. 44 See ’230 patent at 24:34–51, 26:27–47, 28:17–38. In
contrast, the term “in registration with” is used in three of the ’230 patent’s dependent claims:
claims 3, 17, and 31. 45
A patent’s other claims, both asserted and unasserted, can be “valuable sources of
enlightenment as to the meaning of a claim term.” Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). “Differences among claims can [] be a useful guide in understanding the meaning of
particular claim terms. . . . For example, the presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not present in the
independent claim.” Id. at 1314–15 (citing Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538
(Fed. Cir. 1991) and Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)).
Thus, a POSITA would understand the recitation of dependent claims with limitations involving
the term “in registration with” to indicate those precise limitations or concepts are not present in
independent claims 1, 15, and 29. Said differently, the inclusion of dependent claims with
limitations centered on “registration” provides intrinsic evidence suggesting the independent
claims’ Challenged Terms harbor a different, or nuanced, meaning as compared to the Registration
Terms previously deemed indefinite. See also Bajaj Reb. Rpt. ¶ 898 (“Accordingly, because
dependent claims of the ’230 patent, such as Claim 3, incorporate the term ‘registration,’ the
independent claims are to be read as encompassing different claim scope.”) (emphasis omitted).

44

Microsoft acknowledges this point, as it must. See MSFT MSJ Inv. at 21 (“[T]he remaining
asserted claims of the ’230 Patent do not recite the term ‘register’ . . . .”).
45

See supra note 39 (listing claims 3, 17, and 31 from the ’230 patent).
70

Despite such intrinsic evidence, to support its argument, Microsoft repeatedly references
extrinsic evidence which it claims establishes an unmistakable connection between the Challenged
Terms and the Registration Terms. MSFT MSJ Inv. at 22–25. Microsoft has identified SAIC’s
document titled “System Functional Analysis,” which SAIC has previously referenced to prove
conception and reduction to practice of the ’230 patent. Id.; MSFT MSJ Inv. – MSFT Reply at 8–
9; SAIC’s System Functional Analysis (ECF No. 343-18).

SAIC’s System Functional Analysis (ECF No. 343-18) at 4.
Microsoft likewise references deposition testimony by ’230 patent inventor and Rule 30(b)(6)
witness, General John Scales, regarding his understanding of the System Functional Analysis
document. MSFT MSJ Inv. at 22–25 (citing various excerpts from Deposition of John Scales,
dated August 9, 2022 (ECF No. 343-17, 344-15, 353-4, 365-9, 364-1) (Scales Depo. Tr.)).
Specifically, Microsoft emphasizes statements by General Scales which equated
to the “evaluate” operation in claim
limitation 1(d). MSFT MSJ Inv. at 23–24 (citing Scales Depo. Tr. at 143:17–145:5, 160:12–161:9)

General Scales (speaking for SAIC) thus confirmed the close association of the ’230 patent
with the other three invalidated patents.”). Dr. Villasenor likewise relies considerably on General
Scales’ testimony regarding the System Functional Analysis in rendering his opinion that the
“‘evaluate’ step of the ’230 Patent suffers from the same indefiniteness issue present in the invalid
claims that expressly recite ‘registration.’” Villasenor Op. Rpt. ¶¶ 238, 231–36 (emphasis
omitted). Yet, SAIC’s System Functional Analysis document, and General Scales’ testimony
regarding the same, are items extrinsic to the patent, as is Dr. Villasenor’s expert report addressing

71

the same materials. Phillips, 415 F.3d at 1318 (“We have viewed extrinsic evidence in general as
less reliable than the patent and its prosecution history in determining how to read claim terms . .
. .”).
Indeed, Microsoft offers limited discussion of the intrinsic record to support its contention
that the Challenged Terms and the Registration Terms require comparable indefiniteness
conclusions. See MSFT MSJ Inv. at 20–25; MSFT MSJ Inv. – MSFT Reply at 6–8; see generally
Villasenor Op. Rpt. ¶¶ 226–38. In his Opening Report, Dr. Villasenor opines that “the ‘evaluate’
step of the ’230 patent suffers from the same indefiniteness issue present in the invalid claims that
expressly recite ‘registration.’” Id. ¶ 238 (emphasis omitted). Yet, Dr. Villasenor’s Opening
Report offers only limited engagement with the ’230 patent’s intrinsic evidence to support such an
assertion. Indeed, Dr. Villasenor supports his conclusion that the “evaluate” operation is indefinite
by noting, in somewhat conclusory fashion, that claim 1’s “outcome,” or the “display” operation
recited in claim limitation 1(e), “requires” the system to perform a “registration.” Id. ¶ 237; MSFT
MSJ Inv. – MSFT Reply at 7 (“As the ’230 patent builds on the concept of ‘registration’ to
determine whether the overlay scope image represents the same part of the external environment,
the defects identified by the Court regarding that concept apply here as well.”). Microsoft does
not, however, explain how or why Dr. Villasenor’s opinion should overcome the presumption,
evident in the intrinsic record, that different claim terms have different meanings.

See

MicroStrategy, 238 F. App’x at 609. Nor does Microsoft acknowledge the juxtaposition between
the independent claims, which reference the Challenged Terms, and the dependent claims, which
reference the Registration Terms. Phillips, 415 F.3d at 1314–15. Such conclusory expert
testimony, focused primarily on analyzing evidence extrinsic to the patent, is insufficient to meet
Microsoft’s high clear and convincing burden required for proof of invalidity. See id. at 1318

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(“[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful
to a court.”); Cox Commc’ns., 838 F.3d at 1228.
For the foregoing reasons, this Court rejects Microsoft’s assertions that the construction of
the Registration Terms applies automatically to the Challenged Terms. This Court must instead
undertake an indefiniteness analysis unique to the Challenged Terms to determine whether the
’230 patent fails to provide objective boundaries sufficient to avoid indefiniteness concerns.
b.

The ’230 Patent’s Written Description Includes Sufficient Objective
Criteria to Avoid Indefiniteness Concerns

Microsoft contends the ’230 patent fails to provide sufficient detail or objective criteria
such that a POSITA would not know when an alignment has transitioned from a “potential
representation” to an actual representation that displays a “corresponding region” of the external
environment. MSFT MSJ Inv. at 27 (“The language of the ’230 patent claims lacks any definition
of the degree of alignment of the overlaid images representing the external environment and
therefore fails to set out with reasonable certainty the scope of the claimed invention.”); id. at 28
(“Consulting the specification does not inform a POSITA with reasonable certainty of the scope
of the claimed invention of the ’230 patent. . . . [T]he ’230 patent: (1) fails to disclose parameters
for acceptable degrees of error or inform a POSITA the extent of alignment of the overlaid images
required by the claims; and (2) does not contain any objective criteria or other description by which
to measure or know whether the [Challenged Terms] are satisfied.”). Thus, the question that
remains is whether Microsoft has met its burden to provide clear and convincing evidence that the
Challenged Terms, when “read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope
of the invention.” Nautilus, 572 U.S. at 901. The answer is no; Microsoft has not met its burden
here.
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Claim limitations 1(c), 1(d), and 1(e) do not recite specific accuracy measures to define
when the device has achieved a successful alignment (e.g., by specifically identifying tolerable
variances, or error rates, in degrees or pixels). See, e.g., Teva Pharms. USA, Inc. v. Sandoz, Inc.,
789 F.3d 1335, 1338 (Fed. Cir. 2015) (patent claim reciting a specific measurement of a
copolymer’s molecular weight, “about 5 to 9 kilodaltons”). Instead, the patent simply indicates
that the system must perform the motion-based identification and image-based evaluation in claim
limitations 1(c) and 1(d) such that the output of the system depicts a “corresponding region” that
“represents” a single, uniform portion of the external environment. ’230 patent at 24:38–44.
Microsoft alleges this purported lack of objective criteria in the claim language renders the patent
indefinite because terms of degree, like the Challenged Terms, must be defined by objective
boundaries. 46 See MSFT MSJ Inv. at 25–28; MSFT MSJ Inv. – MSFT Reply at 12–16. However,

46

The parties dispute whether the Challenged Terms qualify as terms of degree. Compare MSFT
MSJ Inv. at 27 (“Like the ‘registration’ terms, the ‘represent / corresponding’ terms are terms of
degree and subjective.”) with MSFT MSJ Inv. – SAIC Resp. at 34 (“The ‘a corresponding region’
/ ‘corresponding region represents’ terms are not subjective or terms of degree.”) and Bajaj Reb.
Rpt. ¶ 900 (“[N]othing in the terms ‘identify,’ ‘evaluate,’ or ‘display’ indicates that they are terms
of degree.”). Microsoft argues that the Challenged terms are “purely subjective wherein the
sufficient degree of alignment of the overlaid images depends on the point of view of the individual
soldier using the device and ‘on the unpredictable vagaries of any one person’s opinion.’” MSFT
MSJ Inv. at 28 (quoting Intellectual Ventures I, LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381
(Fed. Cir. 2018)); MSFT MSJ Inv. – MSJ Reply at 10–12. In contrast, SAIC argues that the terms
are not terms of degree, but instead convey “functional” language. MSFT MSJ Inv. – SAIC Resp.
at 23–25 (“Limitations 1(c) and 1(e) recite functional requirements (‘identify’ and ‘display’) that
describe computer operations (a controller configured to evaluate a motion data identification of
the orientations of image sensors based on an image data comparison) that produce machine
outputs (an overlayed display).”).
For purposes of this Court’s indefiniteness analysis, however, this is a distinction without a
difference. Whether the Challenged Terms qualify as terms of degree or functional terms, the
inquiry this Court must perform is identical. In either case, the Court must look to the claims and
the specification to discern whether the details included therein give POSITAs notice of the claims’
scope. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332–33 (Fed. Cir. 2010) (“When
a ‘word of degree’ is used, the court must determine whether the patent provides ‘some standard
for measuring that degree.’ . . . Similarly, when a claim limitation is defined in ‘purely functional
74

while “[t]rue, descriptive words (or terms of degree) in a claim may inherently result in broader
claim scope than a claim defined with mathematical precision,” “a claim is not indefinite just
because it is broad.” Niazi Licensing, 30 F.4th at 1347. “[C]laim language employing terms of
degree has long been found definite where it provided enough certainty to one of skill in the art
when read in the context of the invention.” Id. (quoting Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1370 (Fed. Cir. 2014)) (internal quotation marks omitted). “As with any question of
claim construction, the intrinsic record—the patent's claims, written description, and prosecution
history—along with any relevant extrinsic evidence can provide or help identify the necessary
objective boundaries for claim scope.” Id. at 1349 (citing Guangdong, 936 F.3d at 1360). In
particular, examples in a patent’s written description can “help[] provide sufficient guidance to
render the claims not invalid as indefinite.” Id.; Nevro Corp. v. Boston Sci. Corp., 955 F.3d 35,
39 (Fed. Cir. 2020) (quoting Enzo Biochem. Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir.
2010)) (acknowledging that ambiguity in claim language may be “resolved where the patent
‘provides a general guideline and examples sufficient to enable a person of ordinary skill in the art
to determine the scope of the claims’”).
As an initial matter, both Microsoft and SAIC agree that the system recited in claim 1 is
designed to evaluate, using image data, a preliminary motion-based alignment of video frames,
and then display those frames using a corrected alignment. See, e.g., MSFT MSJ Inv. at 29 (“[T]he

terms,’ a determination of whether the limitation is sufficiently definite is ‘highly dependent on
context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in
the relevant art area).’”) (quoting Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984) and Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1255
(Fed. Cir. 2008)). Thus, regardless of whether the Challenged Terms qualify as terms of degree
or as functional terms, this Court must decide whether the claims and specification provide
sufficient boundaries and guidance to ameliorate any indefiniteness concerns for the Challenged
Terms.
75

crucial aspect of the alleged invention is evaluating in claim element (d) the ‘potential
representation’ identified in claim element (c) to ensure that it is a ‘corresponding region’ and an
actual ‘representation,’ which is displayed in claim element (e).”) (emphasis in original); MSFT
MSJ Inv. – SAIC Resp. at 25 (“Limitation 1(c) is met when a controller executes an algorithm that
uses motion data associated with independently movable video sources to identify the relative
orientation of the video sources. Limitation 1(e) is met when a controller displays images after an
image data analysis algorithm finds a ‘match’ point between (prior or current) image frame pairs
that is used to confirm or adjust a rotation matrix that determines how images are overlayed.”).
Indeed, the patent’s intrinsic record confirms the parties’ understanding. See, e.g., ’230
patent at 2:6–15 (“Data from the two images are then compared in order to evaluate the location
determined from the sensor data. The sensor-based location is either confirmed, or a new location
is found based on additional image comparisons. Once a location is selected (either a confirmed
sensor-based location or a location found using image comparison), the two images are displayed
such that the second source image (or a portion of that image) overlays a corresponding portion of
the first source image.”); id. at 7:19–22 (“[T]he location and rotation of weapon view 74 within
user display 70 is determined by computer 30 based on output from sensor 13 and 18 and based
on comparison of the scope image with the goggle image.”); id. at 18:38–42 (“Other embodiments
also include numerous variations on the above-described methods for using a comparison of a
scope image and a googles image to check an IMU-based location and rotation for that scope image
within that goggles image.”). 47 The specification clearly contemplates the following two-step

47

See OA Tr. at 58:8–19 (SAIC Counsel: “[W]e take in IMU data. We perform calculations that
are -- we do these rotational matrices. It's all laid out in the specification. Because there’s error
and drift in these sensors, it’s potential, it may be and subject to the evaluation step. Then once
we evaluate that data, the image comparisons, and use that to line up with the IMU, then we get to
the output, which is the display step (e).” The Court: “and at that point, that’s sort of a final
76

alignment process that results in an aligned and displayed image: (1) attempt to align video images
using motion data; (2) confirm or correct the motion-based alignment using an image-based check;
then (3) display as the output two aligned images overlaid to depict a single, shared view of the
external environment.
The specification provides examples for how the device may perform the initial motionbased identification outlined in claim limitation 1(c). For example, the specification provides an
exemplary embodiment of the “identify” operation in the flow chart depicted in Figure 5A and its
accompanying written descriptions. See id. at 7:46–10:3. The specification describes how in
“block 111, the pitch, roll and yaw angle values from (goggles) IMU 13 and the pitch, roll and
yaw angle values from (scope) IMU 18 are used to create an IMU-based rotation matrix. The
IMU-based rotation matrix is then used in block 113 to calculate a location (i.e., horizontal and
vertical position) and an image rotation for the scope image within the goggles image.” Id. at
8:35–41. The patent acknowledges that “[r]otation matrices and the use of same to place and orient
one image within another are known in the art and/or would be readily apparent to persons of
ordinary skill in the art once such persons are provided with the information contained” in the
patent’s written description. Id. at 8:42–46. The specification likewise includes Figures 6A
through 6H, which illustrate the use of motion data to identify a part of a weapon image that
“potentially represents” part of the goggles image. See id. at 8:58–10:3. Further, Figure 8H and
its accompanying written description describe an exemplary embodiment in which the device

representation, I’ll call it?” SAIC Counsel: “That’s the output.”); id. at 77:7–13 (SAIC Counsel:
“‘Potentially represents’ is the first step. . . . The first one is we look at IMU data. The second is
we confirm that through a comparison of images, and in this way we crosscheck it. And then it
comes to the display step if it passes.”).
77

identifies a part of the goggles image where the scope image should be placed based on the IMU
sensor’s received motion data. Id. at 13:10–34.
Importantly, the ’230 patent’s specification confirms in several ways that the operations
described in claim limitations 1(c) and 1(d) identify two video frames using motion data that may,
or may not, “represent” the same portion of the external environment, then evaluate those frames
using image data to confirm or improve the accuracy of the alignment. For example, the
specification makes repeated references to the lack of reliability associated with motion data and
the motion-based alignments created through claim limitation 1(c). See, e.g., ’230 patent at 1:38–
44 (“[M]any low-cost IMU sensors experience bias drift over time. Such drift can result in relative
orientation errors of several degrees per hour. In order to prevent such errors from accumulating,
the IMU sensors must be periodically recalibrated. This recalibration typically requires user action
and can disrupt system operation.”); id. at 8:60–63 (“FIGS. 6A through 6H assume data from
sensors 13 and 18 is accurate (e.g., not significantly affected by bias drift) and that weapon view
74 is generated based on the IMU sensor data only.”) (emphasis added); id. at 10:16–21 (“Although
IMU-based orientation determination is relatively simple from a computational standpoint and is
generally quite robust over short periods of time, IMUs can have certain disadvantages. For
example, IMUs have bias drift rates and may be susceptible to significant overshoot if moved
rapidly.”); id. at 10:26–29 (“By checking the IMU-based position and image rotation calculations
using an image comparison, the manner in which data from IMU sensors is used can be
periodically recalibrated and the effects of bias drift, etc. reduced.”); id. at 13:27–34 (“[Figure] 8H
shows goggles image 82 and a portion 311 of goggles image 82 where computer 30 now intends
(relying on inaccurate IMU-based information) to place the scope image 302. . . . For convenience,
the correct position of scope image 302 within goggles image 82 is shown with a different type of

78

broken line.”) (emphasis added). These repeated references to the inherent unreliability of motion
data reinforce the expectation reflected in the specification that the initial motion-based
identification of video frames may not succeed in producing a proper alignment and will require
additional processing.
Additionally, the specification specifically acknowledges that the invention’s displayed
output can be based on either a confirmed sensor-based location or a new location found using
image comparison. See id. at 2:6–15 (“Data from the two images are then compared in order to
evaluate the location determined from the sensor data. The sensor-based location is either
confirmed, or a new location is found based on additional image comparisons. Once a location is
selected (either a confirmed sensor-based location or a location found using image comparison),
the two images are displayed such that the second source image (or a portion of that image)
overlays a corresponding portion of the first source image.”) (emphasis added); id. at 10:21–29
(“To address [bias drift] concerns, the relative orientation of goggles 11 and scope 17 can be
independently deduced by processing image data from image generator 57 and scope 17 if there is
sufficient image content and contrast and if similar imaging technologies . . . are used.”) (emphasis
added); id. at 13:10–21 (“[A] failed image-based check in block 202 indicates that the IMU-based
location for scope image 302 within goggles image 82 may be incorrect. In other words, the scope
image and the part of the goggles image over which computer 30 intends (based on IMU data) to
overlay the scope image do not sufficiently represent the same part of the external environment.
In such a case, computer 30 proceeds on the ‘no’ branch from block 202 to block 206. In block
206, computer 30 attempts to find the proper location for scope image center 305 within goggles
image 82 by comparing scope image 302 with different parts of goggles image 82.”) (emphasis
added); see supra Section I(A)(c) (depicting Figure 7).

Thus, the specification appears to

79

contemplate scenarios in which the motion-based identification fails to result in a proper alignment
such that it is abandoned in favor of an image-based alignment. This would indicate to a POSITA
that the “identify” operation in claim limitation 1(c) merely requires the device attempt an initial
identification based on motion data to locate parts of two images that may overlap.
The specification suggests that whether the motion-based alignment in claim limitation
1(c) has succeeded or failed is indiscernible until the device performs the image-based check
recited in claim limitation 1(d). 48 See, e.g., id. at 10:5–7 (“In block 117 [of FIG. 5B], the IMUbased calculation for position and rotation of weapon view 74 within display 70 is checked using
an image-based method.”) (emphasis added); id. at 11:39–42 (“If the image-based check passes,
the values for the IMU-based rotation matrix (and thus, the center for weapon view 74 predicted
by that IMU-based rotation matrix) are verified.”) (emphasis added). Similarly, the device will
only display a pair of images after it has undergone an image-based evaluation to confirm the
alignment’s correctness. See, e.g., id. at 2:9–15 (“Once a location is selected (either a confirmed
sensor-based location or a location found using image comparison), the two images are displayed
such that the second source image (or a portion of that image) overlays a corresponding portion of
the first source image.”); id. at 15:22–25 (noting that after the system has completed the imagebased check of the motion-based alignment, the “computer 30 proceeds to block 119 of FIG. 5B.
In block 119, the scope image is cropped, resized and/or rotated. The resulting image is then

48

Indeed, the “evaluate” operation informs the “identify” operation to such an extent that the
specification even contemplates embodiments in which the image-based evaluations are used to
“adjust” the way the device performs later iterations of the “identify” operation. See, e.g., ’230
patent at 2:15–17 (“Locations obtained using image comparisons are used to calibrate (adjust) the
manner in which subsequent sensor-based locations are determined.”); id. at 10:26–29 (“By
checking the IMU-based position and image rotation calculations using an image comparison, the
manner in which data from IMU sensors is used can be periodically recalibrated and the effects of
bias drift, etc. reduced.”).
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overlaid on the goggles image as the weapon view (block 121).”); id. at 17:54–57 (“Once the
proper location and orientation for the scope image are deduced, the scope image can be magnified
and cropped prior to overlay as the weapon view.”). Therefore, whether the ’230 patent includes
adequate objective criteria describing when an alignment has transitioned from a potential
representation to an actual representation that displays a “corresponding region” of the external
environment depends on the description of the “evaluate” operation.
As noted, one way a patent may resolve any indefiniteness concerns inherent in the claim
language is by providing examples in the written description that guide a POSITA’s understanding
of the claim’s scope. See Niazi Licensing, 30 F.4th at 1349–50; Nevro, 955 F.3d at 39. The
specification provides a detailed overview of the “evaluate” operation and describes multiple
available methods for performing the image-based analysis used to correct the initial motion-based
alignment. For example, Figures 5B, 7, and 14 depict flowcharts which outline exemplary
embodiments of the “evaluate” operation. ’230 patent at 10:4–15:32, 17:48–23:54; see supra
Section I(A)(c) (depicting Figures 5A, 5B, 7, and 14). These figures are accompanied by both
written descriptions and illustrations in Figures 8A through 8K, 13A and 13B, and 15 through 22,
which further elaborate on potential methods to confirm and correct a motion-based alignment
using image data. Id.
The specification discusses a method for performing the image-based check that relies on
the Brouwer’s Fixed Point Theorem, which is well-known to POSITAs in the field. Id. at 10:47–
60. 49 The specification explains that “[t]he Brouwer fixed point can be found by scanning and

49

’230 patent at 10:47–60 (“In at least some embodiments, image-based position calculation relies
on Brouwer’s Fixed Point Theorem. This theorem holds that a continuous mapping from a planar
region onto itself is guaranteed to have one point whose coordinates are left unchanged by the
mapping. If the scope image is a dilated, translated and rotated distortion of the goggles image,
then there will be at least one point in the goggles image that has the same position in both the
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comparing a goggles image and a scope image and determining a location where a rotationally
invariant similarity metric is maximized,” and notes that “[o]ne such metric is the peak to sidelobe
ratio (PSR) of a cross correlation of two linear signals.” Id. at 11:1–5. Figure 7 provides an
example of an embodiment that employs the Brouwer’s Fixed Point Theorem. Under this
embodiment, “computer 30 performs an image-based check on a point of interest in the portion of
the goggles image identified (using IMU data from sensors 13 and 18) as corresponding to the
center of the scope image. ‘Point of interest’ refers to a point in an image (a center of a portion of
the goggles image in the current example) that is being evaluated as possibly corresponding to a
point on the other image (the center of the scope image in the current example).” Id. at 11:32–39.
To perform the image-based check of a particular point of interest, the device performs a series of
calculations to determine PSRs for a region of an identified goggles image and regions of an
identified scope image centered on a point of interest. See id. at 12:5–16 (“As part of the imagebased check of point 304, several PSRs are calculated using a region of goggles image portion 303
and regions of scope image 302. As seen in FIG. 8C, a first PSR calculation is based on a cross
correlation using the pixel intensity values of the equally-sized annular regions 308 and 309
respectively centered on the center points 304 and 305 of goggles image portion 303 and scope
image 302.”). The PSR value determined from the first calculation is “then compared to PSRs
calculated for annular regions centered on locations around” the original point of interest. Id. at
12:16–19.
“Point 304 passes the image-based check (i.e., the assumption that points 304 and 305 are
the Brouwer fixed point is validated)” once the computer determines that all the PSR values “are

goggles and scope images. . . . The location of the fixed point constrains the solution of the proper
orientation of the scope image relative to the goggles image up to a twist rotation.”).
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within an acceptable range of one another. An acceptable PSR range will depend on the
characteristic performance of the sensor technology (microbolometer, etc.) being used in the
imaging sources (scope 17 and array 56 in the present example), as well as on peculiarities of a
given manufacturer's implementation of a particular class of sensor.” Id. at 12:32–45. Though
“[d]etermining an acceptable range is within the routine ability of a person of ordinary skill in the
art once such a person is provided with the information contained” in the specification, the
specification nevertheless suggests examples for how a POSITA may determine whether the
relevant PSRs are within an “acceptable range.” See, e.g., id. at 12:42–48 (“The acceptable PSR
range for a given combination of a goggles sensor type and a scope sensor type can be determined
by comparing a series of exemplar images obtained using samples of those two sensor types.”).
Once the image-based check for the IMU-based center of the weapon view passes, the
device likewise assesses whether there is a “roll difference” between the two images by
“calculat[ing] the phase shift of the scope image and goggles image and deduc[ing] a twist rotation
from the phase shift.” Id. at 12:65–13:1. The specification informs that the devices’ previous
IMU-based rotation is “verified” when “the difference between the twist rotation and the IMUbased roll difference is within acceptable limits (e.g., less than five degrees).” Id. at 12:64–13:6
(emphasis added). Following this verification, the “operation proceeds to block 119 of [Figure]
5B,” which addresses the “display” operation. Id. Thus, through its description of Figure 7, the
specification has provided objective criteria, based on both PSR and degrees, that a POSITA may
use to determine acceptable error rates in the “evaluate” operation such that the displayed image
would “represent” a “corresponding region” of the external environment.
The specification likewise recites a second example for the image-based check performed
in the “evaluate” operation: Figure 14. See id. at 19:51–23:54. Figure 14 is an alternative image-

83

based evaluation process and is accompanied by Figures 15 through 22, which provide illustrations
of the operations outlined in Figure 14. Id. at 19:52–54 (“Various blocks in the [Figure] 14 flow
chart will be further explained using diagrams and plots in [Figures] 15-22.”). The alternative
embodiment in Figure 14 analyzes high-contrast regions in the scope and goggles images to
determine the appropriate alignment. Id. at 20:15–20 (“In block 703, computer 30 searches image
603 for a square region 610 in which the pixels inside the region 610 have a high degree of contrast.
In particular, computer 30 searches for the square region 610 in which the standard deviation of
pixel gray-scale values is maximized.”). The device then determines whether the region identified
is of “sufficiently high contrast,” meaning that the “standard deviation for gray-scale values within
[the region]” is “sufficiently high.” Id. at 20:35–40. The specification explains that a POSITA
can determine a sufficiently high standard deviation value “for a given combination of goggles
and scope imaging array types based on a series of test images.” Id. at 20:40–43. The devices
then obtain gray-scale values for a series of pixels encircling center points located in the selected
scope and goggles image regions and performs various calculations using this image data. Id. at
20:66–21:67.
One such calculation is to perform “a discrete Fast Fourier Transform (FFT) on each data
set (i.e., a discrete FFT on the 128 scope image values and a discrete FFT on the 128 goggles
image values).” Id. at 21:58–61. The system uses these FFTs in further calculations to “obtain
data that allows peak-to-sidelobe ratio (PSR) comparisons.” Id. at 21:62–67. The patent informs
that if a PSR is “relatively large (e.g., 3 or higher),” the “center points of the scope image region
and of the goggles image region to which it was compared . . . represent the same part of the
external environment.” Id. at 22:1–6. The device repeats these processes to determine whether
other points within the googles and scope image regions should be “checked as possibly

84

coinciding” with one another. Id. at 22:28–51. This occurs until a stop condition is reached, which
could include, for example, once “every other point [in a region] in both the horizontal and vertical
directions” has been analyzed, or when the system has performed analysis over a “pattern” of
locations that “reaches the sides of [the region] along the horizontal plane.” Id. at 22:42–51.
“Once a stop condition is reached and there are no more points to select within” the region,
the computer determines “if any of the data sets (with each set containing a PSR, rotation and
center point location) . . . is unambiguously the best.” Id. at 22:52–56. The specification explains
that “[i]n at least some embodiments, the ‘best’ data set is one in which the PSR is a predetermined
percentage above the other stored PSRs. The percentage by which a ‘best’ point should exceed
others depends on the characteristics of the imaging technology involved, but one example value
is an excess of 10%.” Id. at 22:56–61. The system updates the IMU-derived alignment based on
the position and rotation of the scope image region within the goggles image “resulting from the
unambiguously best data set.” Id. at 22:62–23:1.
The specification’s written descriptions, figures, and illustrations are informative and,
along with the claim language, provide sufficient guidance to render the Challenged Terms, and
their associated claims, not invalid as indefinite. Niazi Licensing, 30 F.4th at 1349–50. The
claimed invention contemplates a system that performs a series of motion-based and image-based
analyses to generate an aligned image in a soldier’s HUD, and the specification makes clear that
there are multiple methods available for performing the claims’ required operations. 50

Of

50

See Ball Metal Beverage Container Corp. v. Crown Packaging Tech., Inc., 838 F. App’x 538,
542 (Fed. Cir. 2020) (“That the record evidence indicates that multiple different methodologies
exist for measuring a parameter recited in a claim does not by itself render a claim indefinite. . . .
We have explained that ‘the mere possibility of different results from different measurement
techniques’ does not render a claim indefinite.”) (quoting Takeda Pharms. Co. Ltd. v. Zydus
Pharms. USA Inc., 743 F.3d 1359, 1366–67 (Fed. Cir. 2014)).
85

particular importance, Figures 5B, 7, and 14 and their accompanying descriptions inform a
POSITA of at least two potential methods for performing the image-based check that determines
when an approved alignment has been found: one applying the Brouwer’s Fixed Point Theorem,
and the other assessing the level of contrast in the scope and goggles images. ’230 patent at 10:47–
60, 19:51–23:54. The patent likewise provides additional commentary for how these processes
can be altered while remaining within the scope of the claimed invention. See, e.g., id. at 23:23–
25 (“As with the algorithm described in connection with [Figure] 7, numerous variations on the
algorithm of [Figure] 14 are within the scope of the invention.”). 51
Further, the ’230 patent’s written description provides examples of objective criteria that
can be used to measure error rates and specific values of those criteria that would “pass” the imagebased check. For example, the specification reiterates more than once that “rotationally invariant
similarity metrics,” such as the peak-to-sidelobe ratio, are appropriate measures for assessing the
degree of alignment between the goggles and scope images. 52 See, e.g., id. at 11:1–4, 21:62–67.

51

See, e.g., ’230 patent at 23:25–48 (“The search pattern of block 721, the sizes of image regions
evaluated, and various other parameters can be varied. As but one example, the above-described
algorithm employs center 604 as one reference point and point 607 as a corresponding reference
point. In other embodiments, a point other than the center of the scope image can be used as the
initial reference point. As another example, individual pixel gray-scale values are the image
element data points used in the FFT analyses. Other image element data points could be used (e.g.,
an average of gray-scale values for several pixels clustered around a point, wavelength (color)
information if sensors provide color information). As yet another example, the diamonds in
[Figures] 17A through 17C have a particular dimensioned arrangement relative to the reference
point (center 604) and the corresponding reference point (point 607). In other embodiments,
different arrangements (e.g., oval, square, concentric rings, etc.) and/or different dimensions (e.g.,
closer to or farther from the reference point and corresponding reference point) can be used. In
still some other embodiments, data sets are stored in block 717 for only the five highest (or some
other predetermined number of highest) PSR values. In some embodiments, the scope image has
a small number of possible FOVs (e.g., 9º diagonal or 18º diagonal).”).
52

See ’230 patent at 11:11–17 (“Numerous definitions of PSR are known in the art and can be
used in different embodiments. For example, PSR can be defined as (PEAK-mean)/𝜎𝜎, where
PEAK is a peak cross correlation value for the centers of the two annular regions, and where mean
86

Figure 7 also describes a second version of acceptable alignment metrics, this time in terms of
degrees. Id. at 12:64–13:6. Finally, the specification provides POSITAs with examples of precise
metrics for when an alignment successfully “represent[s] the same part of the external
environment,” such as when the PSR is 3 or higher or when the difference between the imagebased and IMU-based rotations is within five degrees. Id. at 22:1–6, 12:64–13:6. Thus, the
specification provides a POSITA with examples for when claim limitation 1(e) has been met such
that the scope and goggles images have been properly aligned to depict a “corresponding region”
of the external environment.
In sum, these examples provide a POSITA with sufficient guidance regarding not only
examples of methods that could be used to practice the claims, but also metrics relevant to
measuring the success or failure of the device in practicing the claims. Thus, the examples
included in the ’230 patent’s specification provide POSITAs sufficient guidance regarding the
scope of the Challenged Terms, eliminating indefiniteness concerns. See Niazi Licensing, 30 F.4th
at 1349 (deeming the term “pliable” definite because “the written description contains numerous
examples of a ‘pliable’ inner catheter”); Sonix Techs., 844 F.3d at 1378–79 (deeming the written
description sufficient to provide objective boundaries because it included exemplary designs and
specific examples describing the challenged term). 53

and 𝜎𝜎 are the respective mean and standard deviations of cross correlation values for the annular
regions.”).
53

Microsoft argues SAIC’s position regarding functional language and the operations in claim
limitations 1(c), 1(d), and 1(e) ignores the fact that the invention is inextricably linked to human
users. MSFT MSJ Inv. – MSFT Reply at 10–12. Microsoft notes that “[c]entral to the invention
is the use of a heads-up display, which is inherently and explicitly tied to a human user, as
demonstrated by both the claim language itself and the specification.” Id. at 10–11 (emphasis in
original). Thus, according to Microsoft, the Challenged Terms “are not purely functional language
divorced from the perception of a human user . . . [and] the ’230 patent must provide objective
boundaries to account for the user’s perception.” Id. at 11–12. In so arguing, Microsoft states that
87

c.

The Extrinsic Evidence Supports the Court’s Holding on Objective
Boundaries

The extrinsic evidence confirms this Court’s finding that the ’230 patent does not fail to
“inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

the Challenged Terms “are purely subjective wherein the sufficient degree of alignment of the
overlaid images depends on the point of view of the individual soldier using the device and ‘on
the unpredictable vagaries of any one person’s opinion.’” Id. at 12 (citing Intellectual Ventures,
902 F.3d at 1381); MSFT MSJ Inv. at 28.
The Federal Circuit has regularly distinguished between terms that depend “on the predictable
vagaries of any one person’s opinion,” and those that do not. To that end, Sonix Technology Co.,
Ltd. v. Publications International, Ltd. is instructive on this issue. 844 F.3d 1370 (Fed. Cir. 2017).
There, the Federal Circuit explained that whether a term is considered subjective frequently
depends on whether the terms “turn[] on a person’s tastes or opinion.” Id. at 1378. The Circuit
noted that in Datamize, LLC v. Plumtree Software, Inc., it had previously deemed the term
“aesthetically pleasing” as subjective because it “implicates matters of taste or preference,” and is
based on “a value judgment that inherently varies from person to person.” Id. (citing Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)). The Federal Circuit similarly
noted that the term “in an unobtrusive manner that does not distract,” which was at issue in the
case Interval Licensing LLC v. AOL, Inc., “implicates a person’s individual focus, concentration,
attentiveness, or similar mental state at a given moment, or even opinions, affecting what is or is
not distracting.” Id. (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014)).
In contrast, the Circuit deemed the term at issue in the Sonix Technology case, “visually
negligible,” definite because the term had “an objective baseline through which to interpret the
claims” (i.e., “what can be seen by the normal human eye”), and the patent’s written description
“provide[d] guidance on how to create visually-negligible indicators, and specific examples that
provide points of comparison for the result.” Id. at 1378–79.
These cases demonstrate that the Challenged Terms are not impermissibly subjective so as to
render the asserted claims indefinite. Indeed, though Microsoft is correct that the claimed
invention is intended for use by human users, whether the displayed image depicts the same portion
of the external environment is an objective question that can be determined or measured by
implementing the “evaluate” operation that is thoroughly described in the patent’s specification.
Said differently, whether the device has successfully aligned the goggles and scope images to
portray a unified picture of the external environment does not depend on the soldier’s tastes,
opinions, preferences, or individual judgments. See id. at 1378. Further, Microsoft has not
presented evidence demonstrating that a soldier’s perception of whether the device depicts an
aligned image of the external environment varies substantially from person to person. See id. at
1379 (finding “visually negligible” definite and noting “Appellees have not provided evidence that
human perception varies so significantly that reliance on it as a standard renders the claims
indefinite”).
88

Nautilus, 572 U.S. at 901. For example, expert testimony from SAIC’s expert, Dr. Bajaj in both
the Bajaj Rebuttal Report and from his deposition corroborate this Court’s understanding that the
term “potentially” in claim limitation 1(c) requires an initial motion-based alignment that may, or
may not, result in a valid representation and which requires additional image-based processing.
See Bajaj Reb. Rpt ¶ 903 (“The ’230 Patent further explains that the part of the goggles image
identified by the computer, shown in Fig. 8H as circle 311, does not need to be correct. In fact, in
this embodiment, the part of the goggles image identified by the computer is incorrect, as it is
based on motion data that is intended to be subjected to additional processes.”) (citing ’230 patent
at 13:27–34); id. at ¶ 910 (“As the specification makes clear in Fig. 8H and its description, the
“identify” step does not have to accurately identify the same part of two images. Instead, the claim
explains that the identification of parts of the two images that overlap, according to the motion
data, satisfies the limitation, regardless of how accurate that identification is.”) (citing ’230 patent
at 13:27–34); Bajaj Depo. Tr. at 78:8–79:2

Further, Dr. Bajaj’s explanation of the way in which the exemplary embodiments included
in the ’230 patent’s written description provides sufficient objective boundaries to avoid
indefiniteness concerns. In his Rebuttal Report, Dr. Bajaj analyzed the various portions of the
specification which, he asserts, provide POSITAs with reasonable certainty regarding the scope of
the “identify,” “evaluate,” and “display” operations. See Bajaj Reb. Rpt. ¶¶ 910–17 (discussing
the “identify” operation); id. ¶¶ 918–933 (discussing the “evaluate operation); id. ¶¶ 934–39

89

(discussing the “display” operation). Specifically, Dr. Bajaj agrees with this Court’s understanding
that the specification’s description of the “evaluate” operation provides the lens through which a
POSITA would understand when the device has transitioned from a potential representation to an
actual representation worthy of display. See, e.g., id. ¶ 932 (“[T]he patent’s disclosure of
exemplary methods for determining whether the image-based checks are successful and can then
confirm or update the motion data-based identification is sufficient for a [POSITA] to understand
when they have achieved the ‘evaluate’ step and can proceed to the ‘display’ step.”); id. ¶ 938
(“For example, Dr. Villasenor argues that ‘the ’230 Patent fails to provide a POSITA with
objective criteria for evaluating under what circumstances “potential representation” is accurate
enough to be considered an actual “representation” that is to be displayed by the system.’ But, as
described in the preceding paragraphs of this section, this is precisely what is described in the
image data comparisons that encompass part of the ‘evaluate’ step, and that are described is
sufficient detail in the ’230 patent specification.”).
Dr. Bajaj’s Rebuttal Report likewise provided information regarding the extent to which a
POSITA would be able to understand and perform the various processes described in the patent’s
specification. For example, Dr. Bajaj confirmed the specification’s statement that rotational
matrices are well-known in the art and cited various publications on the subject. See id. ¶¶ 914–
17, 915 n.910. Dr. Bajaj opined that “a [POSITA] would understand the scope of the ‘identify’
limitation, and how to determine ‘a part of a first video source image that potentially represents a
portion of the external environment represented in a part of a second video source image’ based
on motion data, with reasonable certainty, because this limitation merely requires identifying a
mathematical transformation comprising of, for example, rotation matrices, to determine whether
the fields of view of the sensors (e.g., thermal sensors mounted to goggles and weapon) that are

90

rigidly attached near the motion sensors have any overlap, and if so, where.” Id. ¶ 917. Further,
Dr. Bajaj explains how POSITAs would be able to understand how to calculate PSR metrics and
evaluate accuracy variances using those metrics. Id. ¶ 925 n.923 (citing various publications
supporting the proposition that POSITAs would be able to determine an acceptable PSR range).
Dr. Bajaj similarly opined that a POSITA would understand the specification’s statement that an
acceptable PSR value would be 3 or greater to describe “exemplary embodiments in which imagebased checks yield matches with greater than 99% confidence.” Id. ¶¶ 926–27. Thus, according
to Dr. Bajaj, a POSITA “could apply the patent’s teachings when using alternative methods for
undertaking the image-based comparisons of the ‘evaluate’ step to achieve successful image-based
checks.” Id. ¶ 927.
In contrast, the evidence presented by Microsoft, which bears the burden of proof on this
motion, is far less extensive. In support of its arguments on the topic of objective criteria,
Microsoft relies on opinions expressed in the Villasenor Opening Report. See generally Villasenor
Op. Rpt. ¶¶ 239–49. Dr. Villasenor states that “the ’230 Patent fails to provide a POSITA with
objective criteria for evaluating under what circumstances ‘potential representation’ is accurate
enough to be considered an actual ‘representation’ that is to be displayed by the system embodying
claim 1 of the ’230.” Id. ¶ 239. He notes that “a truly ‘perfect’ alignment where one image
perfectly overlays the corresponding portion of another image without any differences likely
cannot be achieved in a real system.” Id. (citing Deposition of Gregory Welch, dated July 17,
2019 (ECF Nos. 79-2, 343-20) (Welch Depo. Tr.) at 166:8; Deposition of Ulrich Neumann, dated
July 11, 2019 (ECF No. 97-1, 343-22) (Neumann Depo. Tr.) at 186:24–187:11). Dr. Villasenor
likewise references this Court’s prior Markman Opinion and testimony from Dr. Welch to note
that “the acceptable degree of alignment (or misalignment) between two images is context-

91

dependent” and that “different registration methods used for different tasks produce different
results.” Id. ¶ 240 (quoting Markman Op., 154 Fed. Cl. at 635 and Welch Depo. Tr. at 209:10–
17, 203:22–204:23). Indeed, Dr. Villasenor opines that “different persons of ordinary skill in the
art may each have different criteria on the acceptable alignment,” without elaborating further on
why this might be the case. Id. ¶ 241.
In his Opening Report, Dr. Villasenor identifies alternative methods for evaluating whether
two images are sufficiently aligned that he alleges the ’230 patent did not contemplate, including
establishing an “absolute misalignment threshold measured in number of pixels or subpixels” and
“evaluating alignment . . . based on an angular measure at a specified distance.” Id. ¶¶ 242–43.
However, Dr. Villasenor does not specifically address any of the exemplary embodiments or
figures outlined in the ’230 patent’s specification, nor does he explain why those embodiments do
not provide sufficient objective boundaries for the Challenged Terms at issue in Microsoft’s
present Motion. See generally id. ¶¶ 239–49. Instead, to support his position that the ’230 patent
lacks objective criteria, Dr. Villasenor repeatedly references extrinsic evidence in the form of (1)
citations to this Court’s prior holdings regarding the Registration Terms, 54 and (2) testimony by

54

See, e.g., Villasenor Op. Rpt. ¶ 230 (summarizing this Court’s Markman holdings on the
Registration Terms and noting the Challenged Terms “suffers from the same defect that led the
Court to hold ‘in registration with’ / ‘registering’ to be indefinite”); id. ¶ 240 (arguing “the
acceptable degree of alignment (or misalignment) between two images is context-dependent,” but
supporting his assertion with statements from the Markman Opinion regarding the Registration
Terms and deposition testimony from Dr. Welch regarding the term “registration”) (quoting
Markman Op., 154 Fed. Cl. at 635 (“Registration depends on the perspective of a particular
application or user, the method of registration used, and the needs and precision required by the
particular use in which the user is engaged.”) and Welch Depo. Tr. 209:10–17, 203:22–204:23);
id. at ¶ 243 (“[T]he ’230 Patent specification’s discussion of 2.9 degrees in the context of parallax
error is not useful to a POSITA in determining acceptable angular alignment of a system
embodying claim 1 of the ’230 Patent. Moreover, I note the Court has found that ‘a POSITA could
not rely on the disclosure of ‘2.9 degrees or less’ as an objective criterion for when registration is
achieved.”) (quoting Markman Op., 154 Fed. Cl. at 638).
92

various SAIC witnesses, whom Dr. Villasenor contends qualify as POSITAs, regarding the alleged
ambiguity surrounding tolerable degrees of misalignment under the ’230 patent. 55 See, e.g.,
Villasenor Op. Rpt. ¶ 249 (“Therefore, Gen. Scales’ and Mr. Rodgers’ testimony corroborates my
opinion that the failure of the ’230 Patent specification to provide reasonable guidance on the scope
of the claim 1 of the ’230 Patent cannot be cured based on how a POSITA would understand the
scope of the claim.”).
Evidence of this nature does not meet the clear and convincing threshold required to prove
invalidity for indefiniteness. See SRAM Corp., 465 F.3d at 1357 (“[A] moving party seeking to
invalidate a patent at summary judgment must submit such clear and convincing evidence of facts
underlying invalidity that no reasonable jury could find otherwise.”). Dr. Villasenor’s analysis is
based almost entirely on extrinsic evidence, rather than on an analysis of the patent’s intrinsic
evidence. See Phillips, 415 F.3d at 1318 (“We have viewed extrinsic evidence in general as less
reliable than the patent and its prosecution history in determining how to read claim terms . . . .”).
Further, Microsoft asserts that testimony from General Scales and Mr. Rodgers provides insight
into a POSITA’s ability to discern objective criteria from the patent’s written description. MSFT
MSJ Inv. – MSFT Reply at 8–10. Yet, SAIC states that Microsoft has “mischaracterize[d] the
nature and relevance of the testimony of inventors General John Scales and Michael Rodgers.”
MSFT MSJ Inv. – SAIC Resp. at 20–22. First, SAIC asserts that the cited testimony from General
Scales “relates to a physical embodiment of an earlier patent . . . not the scope of the claims of the
’230 patent.” Id. Additionally, SAIC notes that Mr. Rodgers’ testimony pertained “to his

55

See Villasenor Op. Rpt. ¶ 241 (citing Welch. Depo. Tr. at 170:2–18); id. ¶¶ 244–46 (citing Scales
Depo. Tr. at 101:6–15, 101:17-102:12, 102:14–21); id. ¶ 248 (citing Deposition of Michael
Rodgers, dated September 7, 2022 (ECF No. 343-23, 365-8) (Rodgers Depo. Tr.) at 187:18–
188:19, 188:21–23).
93

interpretation of General Scales’ SERVAL concept prior to Mr. Rodgers working on the image
processing aspect” of the invention. Id. As SAIC is the non-moving party, this Court must draw
“all justifiable inferences in the non-movant’s favor.” See Akzo Nobel Coatings, 811 F.3d at 1338–
39. Additionally, much of the witness testimony and reasoning Dr. Villasenor relies on to support
his conclusions addresses the Registration Terms, rather than the Challenged Terms. See, e.g.,
Villasenor Op. Rpt. ¶ 239 (citing Welch Depo. Tr. at 166:8 (“There is no perfect registration.”);
Neumann Depo. Tr. at 186:24–187:11 (“[I]t's fair to say there will be deviation, there will be error
[in registration.]”); id. ¶ 240. As previously discussed, these are different terms with different
definiteness implications. See supra Section III(C)(a). 56 For these reasons, Microsoft has failed
to meet its burden.

56

For example, Dr. Villasenor’s repeated reliance on this Court’s Markman Opinion and witness
testimony discussing the Registration Terms proves problematic, as both parties’ experts have
agreed that the term “registration” carries a nuanced and technical meaning among POSITAs in
the field. See OA Tr. at 51:12–14 (Microsoft Counsel: “[T]he testimony of the experts during the
claim construction phase was that registration itself is a term of art.”). During the Markman
hearing, the parties presented substantial expert testimony from Drs. Ulrich Neumann and Gregory
Welch, the Government’s and SAIC’s claim construction experts, respectively, regarding how the
term “registration” has a specialized meaning to POSITAs in the field. See Markman Op., 154
Fed. Cl. at 630; see also Phillips, 415 F.3d at 1318–19 (“We have . . . held that extrinsic evidence
in the form of expert testimony [during claim construction] can be useful to a court . . . to establish
that a particular term in the patent or the prior art has a particular meaning in the pertinent field.”).
For example, “Dr. Neumann explained that ‘in a nutshell’ the field of registration involves
computations designed to measure and address registration errors.” Markman Op., 154 Fed. Cl.
at 635 (quoting Neumann Depo. Tr. at 93:22–94:7). The expert testimony likewise suggested that
“‘registration’ is understood on a continuum,” and that “there are a wealth of registration
techniques with different variations and parameters.” Id. at 635, 637 (citing Neumann Depo. Tr.
at 86:21–87:4, 120:25–129:16, 175:9–176:4, 181:5–8, 193:12–16; Welch Depo. Tr. at 203:22–
212:16).
These various registration techniques, according to the experts, “yield different results in
determining whether registration has occurred.” Id. at 635–36 (citing Neumann Depo. Tr. at
120:25–129:16; Welch Depo. Tr. at 203:22–212:16) (“What is considered proper alignment using
one measurement technique will not be considered proper alignment using another technique.”).
Thus, this expert testimony suggests the Registration Terms are terms of technical importance, or
terms of art, in the relevant field. In contrast, Microsoft has not offered comparable testimony to
94

d.

The Government and L3’s Motion Suffers from the Same Inadequacies
as Microsoft’s Motion and Must Be Denied

In their Joint Motion, the Government and L3 argue that “[t]he deficiencies identified in
Microsoft’s Motion apply with equal force to each of the claims asserted against the Government
and L3, including claims 1, 5, 12, 18, 29, 30, 37, and 39.” L3/Gov. MSJ Inv. at 2. In particular,
the Government and L3 assert that “dependent claims 37 and 39 of the ’230 Patent, which were
not addressed in Microsoft’s motion, are also indefinite,” as these claims “depend[] directly from
independent claim 29, which is fully addressed in Microsoft’s Motion.” Id.; OA Tr. at 81:25–82:4
(Government Counsel: “The Government and L3 don't have any independent basis for arguing that
these claims are indefinite. It's simply the fruit of the poison tree. They depend [on] an
independent claim that is indefinite, and so they are therefore indefinite.”). To the extent the
Government and L3 rely on the arguments and evidence raised in Microsoft’s Motion, the
Government and L3 have likewise failed to prove by clear and convincing evidence that the
Challenged Terms are indefinite for the reasons described above. OA Tr. at 85:12–17 (The Court:
“[I]f I end up denying Microsoft’s motion for summary judgment . . . would you acknowledge that
[your motion] should be denied also?” Government Counsel: “Yes.”).

suggest any of the Challenged Terms would connote a similar technical significance or meaning
to POSITAs in the field. See OA Tr. at 52:1–4 (Microsoft Counsel: “Here I don’t know that I
would say that the term ‘represents’ in and of itself is a term of art. I don’t think we have any
testimony in the record that would suggest that.”). This evidentiary discrepancy suggests that
descriptions within the specification which may have been unsatisfactory to provide sufficient
clarification regarding the Registration Terms may nevertheless prove sufficient for terms of lesser
technical specificity, such as the Challenged Terms. Without further evidence from Microsoft to
the contrary, this Court will not apply reasoning relevant to the Registration Terms as if it is
dispositive on the issue of whether the ’230 patent provides objective criteria sufficient to explain
the scope of the Challenged Terms.
95

The Government and L3 likewise raise two new arguments regarding dependent claims
37 57 and 39 58 that were not addressed in Microsoft’s Motion. First, the Government and L3 argue
that “claim 37’s inclusion of calculating a peak to sidelobe ratio (‘PSR’) as part of the ‘evaluating’
step (d), without providing any objective bounds for assessing whether representation and
coordination have been achieved, is insufficient to avoid indefiniteness.” L3/Gov. MSJ Inv. at 3.
This argument, however, is irrelevant, as the specification includes substantial discussion of PSR
that provides sufficient guidelines for a POSITA to know the scope of claim 37, including the
presence of an example acceptable variance threshold stated in terms of PSR. See, e.g., ’230 patent
at 22:1–6 (explaining that when PSR is “relatively large (e.g., 3 or higher),” the “center points of
the scope image region and of the goggles image region to which it was compared . . . represent
the same part of the external environment”); supra Section I(A)(c). Additionally, Dr. Bajaj has
submitted largely unrebutted, corroborating testimony suggesting a POSITA would understand
how to perform calculations using PSR and would understand the degree of variance associated

57

Claim 37 states:
37. The non-transitory machine-readable medium of claim 29, wherein step (d) includes
(d1) selecting a first location in the first video source image and a second location
in the second video source image,
(d2) calculating a peak to sidelobe ratio (PSR) using regions of the first and second
video source images surrounding the first and second locations, and
(d3) assessing, using the PSR of step (d2), whether the first and second locations
represent the same portion of the external environment.

’230 patent at 29:31–40.
58

Claim 39 states: “39. The non-transitory machine-readable medium of claim 29, comprising
additional instructions for performing steps that include adjusting, based on the evaluation of step
(d), the manner in which the identification of step (c) is performed.” ’230 patent at 30:15–18.
96

with different PSR values. Bajaj Reb. Rpt. ¶¶ 925–27. Accordingly, the Government and L3’s
argument on this issue is unavailing.
The second, additional argument the Government and L3 raise states that “claim 39’s
recitation of ‘additional instructions for performing steps that include adjusting, based on the
evaluation of step (d), the manner in which the identification of step (c) is performed’ adds no
clarity to the indefinite independent claim from which it depends.” L3/Gov. MSJ Inv. at 2. Once
again, this argument proves unavailing, as this Court has already confirmed that the ’230 patent’s
written description provides sufficient detail to ameliorate indefiniteness concerns for the
Challenged Terms. See supra Section III(C)(b).
D.

Conclusion – Motions for Summary Judgment of Invalidity Based on
Indefiniteness

For the foregoing reasons, this Court holds that the Challenged Terms, and their
accompanying asserted claims, are not invalid as indefinite. Accordingly, Microsoft’s Motion for
Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 339) is DENIED. The
Government and L3’s Joint Motion for Summary Judgment of Invalidity Based on Indefiniteness
(ECF No. 342) is likewise DENIED.
IV.

Motions for Summary Judgment of Infringement and Non-Infringement
Microsoft and L3 each filed Motions for Summary Judgment for Non-Infringement related

to their respective accused devices. See generally MSFT MSJ NI; L3 MSJ NI. Additionally, SAIC
filed its own Motion for Partial Summary Judgment of Infringement against the Government
related to the DRS and Elbit accused devices. See SAIC’s Motion for Partial Summary Judgment

97

of Infringement by the Government and for Summary Judgment Regarding the Desert’s Edge Prior
Art Status (ECF No. 340) (SAIC MSJ Inf.). 59
Having considered the parties’ arguments, applicable law, and the record, this Court
GRANTS Microsoft’s Motion for Summary Judgment of Non-Infringement (ECF No. 343),
DENIES L3’s Motion for Summary Judgment of Non-Infringement (ECF No. 341), and DENIES
SAIC’s Motion for Partial Summary Judgment of Infringement by the Government and for
Summary Judgment Regarding the Desert’s Edge Prior Art Status (ECF No. 340). This Court
addresses each Motion in turn below.
A.

Applicable Legal Standards – Motions for Summary Judgment of
Infringement/Non-Infringement

Determining whether a device infringes an asserted patent claim requires a two-step
inquiry. See Gart v. Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001); Medgraph, Inc. v.
Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016) (citing Abbott Lab’ys. v. Sandoz, Inc., 566
F.3d 1282, 1288 (Fed. Cir. 2009)) (“Evaluation of summary judgment of noninfringement is a twopart inquiry . . . .”). First, “a court construes the scope and meaning of the asserted patent claims.”
Medgraph, 843 F.3d at 949; Gart, 254 F.3d at 1339 (same). “[C]laim construction is a question
of law that is ‘exclusively within the province of the court.’” Stern v. SeQual Techs., Inc., 840 F.
Supp. 2d 1260, 1266 (W.D. Wash. 2012), aff’d, 493 F. App’x 99 (Fed. Cir. 2012) (quoting
Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996)). 60 Accordingly, a court has
59

Though SAIC originally moved for summary judgment regarding the Desert’s Edge prior art
status (SAIC MSJ Inf. at 40–48), the parties have jointly stipulated that “the Desert’s Edge
references . . . will not be argued to qualify as prior art under any section of 35 U.S.C. § 102 in
connection with these proceedings, and the references will not be relied upon as anticipatory or as
part of an obviousness combination of references.” Joint Notice and Stipulation (ECF No. 398) at
1–2; see infra Section IV(F).
60

See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015) (acknowledging that
while “the ultimate issue of the proper construction of a claim should be treated as a question of
98

discretion to “engage in claim construction during various phases of litigation, not just in a
Markman order.” Conoco, Inc. v. Energy & Env’t Int’l, L.C., 460 F.3d 1349, 1359 (Fed. Cir.
2006); see Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1385 (Fed. Cir. 2016) (quoting Conoco,
460 F.3d at 1359) (“We have long held that a district court may ‘engage in rolling claim
construction, in which the court revisits and alters its interpretation of the claim terms as its
understanding of the technology evolves.’”); Level Sleep LLC v. Sleep Number Corp., 2020-1718,
2021 WL 2934816, at *3 (Fed. Cir. July 13, 2021) (acknowledging district court “was well within
its power to clarify, supplement, and even alter its construction of [a claim limitation] in its
summary judgment order”). During claim construction, a court’s “objective is to interpret the
claims from the perspective of one of ordinary skill in the art.” Dayco Prods., Inc. v. Total
Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001); Iridescent Networks, Inc. v. AT&T
Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019) (citing Phillips v. AWH Corp., 415 F.3d 1303,
1312–14 (Fed. Cir. 2005) (en banc)) (“Claim construction seeks to ascribe the meaning to a claim
term as understood by a person of ordinary skill in the art at the time of invention.”).
Second, a court “compares the construed claims to the accused product or process.”
Medgraph, 843 F.3d at 949; Gart, 254 F.3d at 1339 (same). Whether a product infringes is a
question of fact. See Medgraph, 843 F.3d at 949. “An infringement issue is properly decided
upon summary judgment when no reasonable jury could find that every limitation recited in the

law . . . in patent construction, subsidiary factfinding is sometimes necessary”); id. at 325 (“[I]t
was proper to treat the ultimate question of the proper construction of the patent as a question of
law in the way that we treat document construction as a question of law.”); id. at 320 (“When the
district court reviews only evidence intrinsic to the patent, the judge's determination is solely a
determination of law . . . . [W]here the district court needs to consult extrinsic evidence in order to
understand, for example, the background science or the meaning of a term in the relevant art during
the relevant time period, and where those subsidiary facts are in dispute, courts will need to make
subsidiary factual findings about the extrinsic evidence.”).
99

properly construed claim either is or is not found in the accused device . . . .” Gart, 254 F.3d at
1339; Medgraph, 843 F.3d at 949 (“[A] grant of summary judgment of noninfringement is proper
when no reasonable factfinder could find that the accused product contains every claim limitation
or its equivalent.”). The moving party “bears the burden of showing that there are no material
facts in dispute, and all reasonable inferences must be resolved in the non-movant’s favor.”
Herman v. William Brooks Shoe Co., 7 F. App’x 941, 943 (Fed. Cir. 2001) (citing Rockwell Int’l
Corp. v. United States, 147 F.3d 1358, 1361–62 (Fed. Cir. 1998)); McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1348 (Fed. Cir. 2001) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 255 (1986)) (“For purposes of the motion, ‘[t]he evidence of the nonmovant is to be believed,
and all justifiable inferences are to be drawn in his favor.’”). However, once the moving party has
met its initial evidentiary burden, the non-moving party “can no longer rest on . . . mere allegations,
but must set forth by affidavit or other evidence specific facts, which for purposes of the summary
judgment motion will be taken as true.” FastShip, LLC v. United States, 892 F.3d 1298, 1307–08
(Fed. Cir. 2018) (quoting Lujan v. Defs. of Wildlife, 504 U.S. 555, 561 (1992)) (internal quotation
marks omitted); see Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed.
Cir. 2006) (noting that when a movant supports its motion with sufficient evidence to make a prima
facie showing, “the burden of production then shift[s] to [the nonmovant] to identify genuine issues
that preclude summary judgment.”).
B.

The Ordering Theory of Non-Infringement

In their respective Motions for Summary Judgment, Microsoft and L3 each raise an
ordering theory of non-infringement, alleging certain claim limitations contained in the ’230 patent
must be practiced in order. 61 See MSFT MSJ NI at 6–7, 33–42; L3 MSJ NI at 40–44. To reiterate,
61

The Government likewise raises arguments centered on the ordering of the ’230 patent’s claim
limitations in its Response to SAIC’s Motion for Partial Summary Judgment of Infringement. See,
100

claim 1, which is representative of all independent claims in the ’230 patent on this issue62,
describes a controller configured to perform the following process:
(a) receive video images from the first video source and from the second video
source,
(b) receive motion data indicative of motion of the first and second video sources,
(c) identify, based on the received motion data, a part of a first video source image
that potentially represents a portion of the external environment represented in
a part of a second video source image;
(d) evaluate, based on a comparison of data from the first and second video source
images, the identification performed in operation (c); and
(e) display at least a portion of the first video source image and at least a portion
of the second video source image such that the second video source image
portion overlays a corresponding region of the first video source image portion,
wherein the corresponding region represents a portion of the external
environment represented in the second video source portion.
’230 patent at 24:34–51. Microsoft and L3 argue that based on the plain language of the claim
terms, a device must practice claim limitations 1(c), 1(d), and 1(e) in that order, on individual pairs
of image frames, to infringe claim 1. See MSFT MSJ NI at 6 (“[T]he Asserted Claims require the
‘identify’, ‘evaluate’, and ‘display’ operations be performed in that order on pairs of the received
images.”) (emphasis in original); see L3 MSJ NI at 40–44 (“The asserted independent claims of

e.g., SAIC MSJ Inf. – Gov. Resp. at 12 (“SAIC has not shown that the DRS ENVG-III and the
Elbit ENVG-B systems perform the ‘identify,’ ‘evaluate,’ and ‘display’ steps in the order required
by the asserted claims on the same pair of video images.”).
62

See Bajaj Reb. Rpt. ¶ 455 (describing the method steps in claim limitations 1(c) through 1(e) of
claim 1, and noting “[t]he other independent claims (15 & 29) contain corresponding requirements
for the claimed method and computer readable medium, respectively. Accordingly, these
requirements are part of all the asserted claims.”); Villasenor App. D ¶ 23 (“As noted above, all of
the Asserted Claims of the ’230 patent recite a particular approach for aligning a set of image
frames that requires three key elements – identify, evaluate, and display – that are all performed
on the same set of ‘first’ and ‘second’ ‘video source image[s]’ in a particular logical sequence . . .
.”).
101

the ’230 patent also require that the same pair of video source images that were used for the
‘identify’ step of element (c) and the ‘evaluate’ step of element (d) must in turn be the same pair
of video source images that are overlayed pursuant to element (e) based on the alignment
performed in the ‘identify’ and ‘evaluate’ steps.”) (emphasis in original).
a.

Applicable Legal Standards – The Ordering Theory of NonInfringement

The question of whether patent claims require a particular order is typically viewed as an
issue of claim construction. 63 See, e.g., Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d

63

SAIC repeatedly argues Microsoft’s and L3’s ordering theories amount to untimely requests for
the Court to engage in claim construction. See, e.g., MSFT MSJ NI – SAIC Resp. at 36 (“Lastly,
Microsoft’s position that the identify, evaluate, and display steps must be performed in a specific
order is a new untimely claim construction argument. Microsoft could have (and should have)
raised this issue during claim construction but made the conscious effort to not.”); L3 MSJ NI –
SAIC Resp. at 45–46 (“L3 has provided an untimely non-infringement position based on newly
disclosed claim constructions.”). However, these protestations ring hollow, as the trial court has
discretion to consider claim construction at any point in a litigation, including at the summary
judgment phase. See, e.g., Conoco, 460 F.3d at 1359 (noting a court may “engage in claim
construction during various phases of litigation, not just in a Markman order”); MicroStrategy,
429 F.3d at 1350 (affirming summary judgment of non-infringement where the district court
construed some disputed claim limitations in a Markman order and later construed remaining claim
limitations necessary to decide summary judgment motions).
Further, it is unclear whether Microsoft or L3 could have reasonably recognized the need to seek
claim construction from the Court on this issue prior to the summary judgment phase. “[D]istrict
courts are not (and should not be) required to construe every limitation present in a patent’s asserted
claims,” and are instead expected to perform claim construction only “[w]hen the parties present
a fundamental dispute” regarding a claim’s meaning. O2 Micro, 521 F.3d at 1362–63 (emphasis
in original); Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
(“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to
resolve the controversy.”). Yet, during discovery, SAIC and its expert expressed, at best, an
inconsistent position related to whether the claim limitations must be performed in a particular
order. Compare Bajaj Reb. Rpt. ¶¶ 405, 457, 458 (Dr. Bajaj appearing to express the opinion that
claim limitations 1(c), 1(d), and 1(e) must be performed in a particular order on a current pair of
video frames to distinguish the ’230 patent from prior art) with Bajaj Op. Rpt. ¶ 79 and Bajaj App.
A ¶¶ 154–55, 205 (Dr. Bajaj expressing the opinion that claim limitations 1(c), 1(d), and 1(e) can
be performed in any order). Thus, SAIC’s fluctuating position failed to clearly convey a
“fundamental dispute” or “controversy” existed related to Microsoft’s and L3’s ordering theory.
O2 Micro, 521 F.3d at 1362–63; Vivid Techs., 200 F.3d at 803. Indeed, if SAIC meaningfully
102

1392, 1398 (Fed. Cir. 2014) (“Order-of-Steps Requirement in the Claim Construction”); Hytera
Commc’ns Co., Ltd. v. Motorola Sols., Inc., 841 F. App’x 210, 219 (Fed. Cir. 2021) (“[W]e thus
decline to construe the claim as allowing deviation from that order.”); Loral Fairchild Corp. v.
Sony Corp., 181 F.3d 1313, 1321 (Fed. Cir. 1999) (agreeing with the district court’s “claim
construction” that the patent “recites a process sequence”). “Claim construction begins with the
language of the asserted claims.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1283–
84 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). Generally, unless the steps of a claim “actually recite” an order, the “steps are not
ordinarily construed to require one.” Mformation Techs., 764 F.3d at 1398 (quoting Interactive
Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)). However, a claim
“‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires
that the steps be performed in the order written, or the specification directly or implicitly requires’
an order of steps.” Id. at 1398–99 (quoting TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x
974, 978 (Fed. Cir. 2008)); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir.
2003) (quoting Interactive Gift, 256 F.3d at 1343) (“First, we look to the claim language to
determine if, as a matter of logic or grammar, they must be performed in the order written. . . . If
not, we next look to the rest of the specification to determine whether [the specification] ‘directly
or implicitly requires such a narrow construction.’”). 64

disputed Microsoft’s and L3’s reading of the claim limitations, SAIC had equal responsibility and
opportunity to raise this dispute to the Court’s attention prior to summary judgment.
64

The Federal Circuit’s decisions and instructions for when claim limitations require a specific
order typically involve method claims. See, e.g., Mformation Techs., 764 F.3d at 1394; Interactive
Gift, 256 F.3d at 1328; Altiris, 318 F.3d at 1367. While claim 1 of the ’230 patent is an apparatus
or system claim, claim 1 recites a series of method steps the system is designed to perform. See
’230 patent at 24:25–51; see, e.g., Interactive Gift, 256 F.3d at 1342–43 (acknowledging that
“method steps” can implicitly require an order); SmartPhone Techs. LLC v. Rsch. in Motion Corp.,
103

Nos. 6:10cv74 LED–JDL and 6:10cv580 LED–JDL, 2012 WL 3150756, at *28 (E.D. Tex. Aug.
2, 2012) (“It is important to note that Claim 17 is not a method claim, but rather a system claim,
the bounds of which are defined, in part, by a method the system is capable of performing.”). In
fact, claim limitations 1(a) through 1(e) are identical to the corresponding claim limitations listed
in method claim 15, with the exception that claim 15 phrases the method steps as gerunds.
Compare ’230 patent at 24:25–51 (“(c) identify, based on the received motion data . . . (d) evaluate,
based on a comparison of data . . . and (e) display at least a portion of the first video source image
. . . .”) (emphasis added) with id. at 26:27–47 (“(c) identifying, based on the received motion data
. . . (d) evaluating, based on a comparison of data . . . and (e) displaying at least a portion of the
first video source image . . . .”) (emphasis added). The same is true for independent claim 29,
which is a machine-readable medium claim “having machine-executable instructions for
performing a method, comprising . . . (c) identifying, based on the received motion data . . . (d)
evaluating, based on a comparison of data . . . and (e) displaying at least a portion of the first video
source image . . . .” Id. at 28:17–38 (emphasis added).
This Court is not aware of, nor have the parties identified, any Federal Circuit precedent
establishing a per se rule that system claims may not be construed to require an order. Therefore,
based on the shared language between claims 1, 15, and 29, all three independent claims contain
the same method steps, the same definite and indefinite articles creating an antecedent basis
relationship, and the same logical sequence between “potentially represent” and “represent.” See
infra Section IV(B)(b)(1). Given the identical nature of these claims, Federal Circuit precedent
involving claim construction for ordering must apply universally to all three independent claims
in the ’230 patent. To suggest otherwise or imply the ordering analysis should apply to method
claim 15 but not claims 1 and 29, when all three claims share the identical method steps embedded
in their language, would lead to an unreasonable and illogical result.
Further, all parties have acknowledged that claim 1 requires some degree of ordering for the
method steps recited in claim limitations 1(c), 1(d), and 1(e). For example, SAIC concedes that
the patent’s language requires a specific order for the “identify” operation in claim limitation 1(c)
and the “evaluate” step in claim limitation 1(d). See, e.g., OA Tr. at 121:10–11 (SAIC Counsel:
“We don’t dispute that there’s a sequence required for steps (c) and (d) . . . .”); MSFT MSJ NI –
SAIC Resp. at 28 (“SAIC agrees with Microsoft that the identify element must precede the evaluate
element as the claim language of the evaluate element explicitly refers back to the identify
element.”). The presence of an ordering requirement in claim 1 was likewise confirmed by SAIC’s
expert, Dr. Bajaj, in his Rebuttal Report on invalidity. See, e.g., Bajaj Reb. Rpt. ¶¶ 405, 457, 458;
infra Discussion Section IV(B)(b)(4). In his report, Dr. Bajaj likewise indicated his view that
claim 1 is representative of all the independent claims, and his analysis did not distinguish between
system claim 1, method claim 15, and machine-readable-medium claim 29. See Bajaj Reb. Rpt. ¶
455 (describing the method steps in claim limitations 1(c) through 1(e) of claim 1, and noting
“[t]he other independent claims (15 & 29) contain corresponding requirements for the claimed
method and computer readable medium, respectively. Accordingly, these requirements are part of
all the asserted claims.”). SAIC’s view of claim 1’s representative nature was further confirmed
by SAIC counsel in its briefing and during Oral Argument. See MSFT MSJ NI – SAIC Resp. at 8
n.2 (“For the purpose[s] of SAIC’s response, Claim 1 is representative of the asserted independent
claims.”); OA Tr. at 56:20–21 (SAIC Counsel: “This is claim 1 which is representative of the ’230
104

As a preliminary matter, SAIC does not dispute that the “evaluate” operation in claim
limitation 1(d) must follow the “identify” operation in claim limitation 1(c). See, e.g., OA Tr. at
121:10–11 (SAIC Counsel: “We don’t dispute that there’s a sequence required for steps (c) and
(d) . . . .”); MSFT MSJ NI – SAIC Resp. at 28 (“SAIC agrees with Microsoft that the identify
element must precede the evaluate element as the claim language of the evaluate element explicitly
refers back to the identify element.”). Indeed, such a concession is unavoidable, as claim limitation
1(d) explicitly references the identification completed in claim limitation 1(c). ’230 patent 24:42–
44 (“(d) evaluate, based on a comparison of data from the first and second video source images,
the identification performed in operation (c)”) (emphasis added); see Kaneka Corp. v. Xiamen
Kingdomway Grp. Co., 790 F.3d 1298, 1306–07 (Fed. Cir. 2015) (noting that a claim “implicitly
requires order . . . if the language of a claimed step refers to the completed results of the prior
step”). Therefore, the only question remaining is whether the “display” operation in claim
limitation 1(e) must occur in a particular sequence relative to the “identify” and “evaluate”
operations in claim limitations 1(c) and 1(d), respectively. This Court holds that it does.
b.

Discussion – The Ordering Theory of Non-Infringement
1.

Claim 1’s Plain Language, Grammar, and Logic Require an
Order

An inspection of claim 1’s plain language reveals that as a matter of grammar and logic,
the “display” operation in claim limitation 1(e) must be preceded by the “identify” operation in
claim limitation 1(c) with respect to the same pair of video frames. First, a POSITA would
understand that the terms “first video source image” and “second video source image” first
patent other claims.”); see also MSFT MSJ NI at 9 (Microsoft noting that “[c]laim 1 is
representative regarding the required three basic operations.”). In sum, all parties have already
acknowledged claim limitations 1(c) and 1(d) require some degree of ordering. Therefore, there
is no merit to the suggestion that claim limitations 1(c), 1(d), and 1(e) may not be construed to
require an order simply because claim 1 is a system claim.
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introduced in claim limitation 1(c) act as the antecedent bases for those same terms later referenced
in claim limitation 1(e). Compare ’230 patent at 24:38–41 (“(c) identify . . . a part of a first video
source image that potentially represents a portion of the external environment represented in a part
of a second video source image”) (emphasis added) with id. at 24:45–51 (“(e) display at least a
portion of the first video source image and at least a portion of the second video source image . . .
.”) (emphasis added). The transition in the claim language from the indefinite article “a” in claim
limitation 1(c) (i.e., “a first video source image”/“a second video source image”) to the definite
article “the” in claim limitation 1(e) (i.e., “the first video source image”/“the second video source
image”) confirms this antecedent relationship. See Antecedent Basis, BLACK’S LAW DICTIONARY
(11th ed. 2019) (noting that when an antecedent relationship exists, “[i]n general, a term is first
introduced with an indefinite article and is later referred to with the definite article (or said)”); WiLAN, Inc. v. Apple Inc., 811 F.3d 455,462 (Fed. Cir. 2016) (citing Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)) (“Subsequent use of the definite articles ‘the’
or ‘said’ in a claim refers back to the same term recited earlier in the claim.”); NTP, Inc. v. Rsch.
in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005), abrogated on other grounds by Zoltek Corp.
v. United States, 672 F.3d 1309, 1323 (Fed. Cir. 2012) (en banc) (recognizing an antecedent
relationship between claim limitations based on the use of definite article “the”).
The presence of this antecedent relationship is instructive for two reasons. First, it confirms
Microsoft’s and L3’s construction that the video source images that are identified, evaluated, and
displayed are a single pair of video frames. 65 See, e.g., Univ. of Mass. v. L’Oréal S.A., 36 F.4th
1374, 1380 (Fed. Cir. 2022) (acknowledging the claim term “the adenosine concentration” was

65

This Court previously construed the term “video source image” to mean “digital, analog, or
nonstandard video frames.” See Markman Op., 154 Fed. Cl. at 614–27.
106

“language for invoking an antecedent—for repeating, not departing from, the claim's prior
reference to ‘a concentration of adenosine,’” and from this concluding “that there is only one such
concentration called for by independent claim 1”); see also Warner–Lambert Co. v. Apotex Corp.,
316 F.3d 1348, 1356 (Fed. Cir. 2003) (quoting Am. Bus Ass'n v. Slater, 231 F.3d 1, 4–5 (D.C. Cir.
2000)) (“[I]t is a rule of law well established that the definite article ‘the’ particularizes the subject
which it precedes. It is a word of limitation as opposed to the indefinite or generalizing force of
‘a’ or ‘an.’”). Second, the antecedent relationship implies a sequence as a matter of grammar: to
practice the ’230 patent claims, a device must “identify” “part[s]” of “a” pair of video frames, then
sometime thereafter “display” “portion[s]” of “the” pair of video frames previously identified. See,
e.g., Hytera Commc’ns, 841 F. App’x at 218 (“That includes ‘a’ timeslot in the ‘preparing’ step,
which grammatically provides antecedent basis for ‘the’ timeslot in the ‘determining’ step. . . .
[T]he fact that the ‘determining’ step says ‘the’ when it could have said ‘a’ reinforces our
conclusion that it is meant to come after the ‘preparing’ step.”); Wi-LAN, 811 F.3d at 462
(recognizing use of definite article “the” to form antecedent relationship between terms required
claim steps be performed in a specific order). “The” pair of video frames cannot be displayed at
step 1(e) unless the frames are first identified at step 1(c). Arguments to the contrary ignore the
claim’s plain language. 66

66

During Oral Argument, counsel for SAIC raised the argument that the term “video images” in
claim limitation 1(a) serves as the antecedent basis for the term “video source image” as used in
claim limitations 1(c), 1(d), and 1(e). See, e.g., OA Tr. at 108:6–11 (“[T]he antecedent for (e) is
(a), which is receiving video images from the first video source and from the second video source
and that those are the video images. There's no dispute that each of steps (c), (d) and (e) are
performed on video images that are received in step (a).”). As an initial matter, SAIC
acknowledges that this argument is addressed in the Supplemental Bajaj Declaration, which has
been struck from the record. See OA at 107:15–17 (“[O]n this one, I’ll talk about the supplemental
Bajaj report . . . .”).
107

Other textual and logical cues in the claim language demonstrate that both the “identify”
and “evaluate” operations stated in claim limitations 1(c) and 1(d), respectively, must always
precede the “display” operation in claim limitation 1(e) for a given pair of frames. Through claim

Nevertheless, SAIC’s argument is incorrect, as claim limitations 1(a) and 1(c)/1(d)/1(e) recite
different terms. Compare ’230 patent at 24:34–35 (“(a) receive video images . . .”) (emphasis
added) with id. at 24:38–41 (“(c) identify . . . a part of a first video source image . . . .”) (emphasis
added); OA Tr. at 127:5–10 (Microsoft Counsel: “The other thing is on that issue of antecedent
basis, if you look, counsel for SAIC wants to focus on [claim limitation] (a), which is receive video
images. Again, to be very specific, that is not an antecedent for video source image because that's
a different term, a video source image.”); Wi-LAN, 811 F.3d at 462 (“Subsequent use of the definite
articles ‘the’ or ‘said’ in a claim refers back to the same term recited earlier in the claim.”)
(emphasis added). The term “video source image” appears for the first time in claim limitation
1(c), preceded by the indefinite article “a.” See ’230 patent at 24:38–41. The same term “video
source image” is later repeated in claim limitations 1(d) and 1(e), preceded by the definite article
“the.” See id. at 24:42–44, 24:45–51. In contrast, not only does claim limitation 1(a) recite a
different term, “video images,” but it also includes neither an indefinite nor definite article to
introduce the term. See ’230 patent at 24:34–35. Thus, the claims’ plain language and basic
grammar both suggest an antecedent relationship exists between claim limitations 1(c), 1(d), and
1(e), but not claim limitation 1(a). See Antecedent Basis, BLACK’S LAW DICTIONARY (11th ed.
2019) (noting that when an antecedent relationship exists, “[i]n general, a term is first introduced
with an indefinite article and is later referred to with the definite article (or said)”).
Further, SAIC’s insinuations that this Court’s Markman Opinion somehow mandates SAIC’s
proposed reading of the claims is also incorrect. See OA Tr. at 106:4–108:11 (asserting that
adopting Microsoft’s and L3’s argument on antecedent basis would be “contrary to what Your
Honor found in the Markman decision”). This Court’s Markman Opinion clarified that the terms
“video images,” “video source image,” and “video data of images” referenced “digital, analog, or
nonstandard video frames.” Markman Op., 154 Fed Cl. at 614–19. In later construing the term
“based on a comparison of data from the first and second video source images” found in claim
limitation 1(d), the Court likewise confirmed the “data” being evaluated in claim limitation 1(d)
was the image data received through claim limitation 1(a), as opposed to the motion data received
in claim limitation 1(b). See id. at 627–28. In other words, the Court clarified the type of data
being evaluated in claim limitation 1(d): image data. Id. However, this finding does not mandate
the grammatical relationship between claim limitation 1(e) and claim limitation 1(a) that SAIC
suggests is required. Though the ’230 patent contemplates practicing the “identify,” “evaluate,”
and “display” operations recited in claim limitations 1(c), 1(d), and 1(e), respectively, upon one
pair of frames received through claim limitation 1(a), that practical reality does not negate or
override the clear antecedent relationship between the term “video source image” as used in claim
limitations 1(c), 1(d), and 1(e). Said differently, that the patent evaluates a single pair of images
selected from a larger pool of images received in claim limitation 1(a) does not create some broader
grammatical or antecedent relationship between claim limitations 1(a) and 1(e).
108

limitation 1(c), the device identifies parts of “a” pair of video frames that “potentially represent[]”
the same portion of the external environment. See ’230 patent at 24:38–41 (“(c) identify, based on
the received motion data, a part of a first video source image that potentially represents a portion
of the external environment represented in a part of a second video source image”) (emphasis
added). In contrast, claim limitation 1(e) states the device must later display portions of “the” pair
of video frames such that overlaying the frames creates a “corresponding region” that “represents”
the same portion of the external environment. See id. at 24:45–51 (“(e) display at least a portion
of the first video source image and at least a portion of the second video source image such that
the second video source image portion overlays a corresponding region of the first video source
image portion, wherein the corresponding region represents a portion of the external environment
represented in the second video source portion.”) (emphasis added).
A POSITA would find informative the juxtaposition in the claim language between
“potentially represents” and “represents,” as “different claim terms are presumed to have different
meanings.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)
(declining to construe the term “partially hidden from view” to have the same meaning as the term
“generally hidden from view”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324,
1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different
meanings . . . .”) (emphasis in original). The term “potentially represents” implies uncertainty
exists regarding the accuracy of the alignment “based on the received motion data” that results
from the “identify” operation in claim limitation 1(c). See ’230 patent at 24:38–41. However, the
use of “represents” in claim limitation 1(e), rather than “potentially represents,” indicates the
device has eliminated the previous uncertainty in the alignment. See id. at 24:45–51. Logic,
therefore, requires that some intervening event has occurred between the “identify” and “display”

109

operations to improve the accuracy of the alignment: the “evaluate” operation based on image
data 67 embodied in claim limitation 1(d). See id. at 24:42–44.
Accordingly, this Court holds that the Asserted Claims’ plain language, grammar, and logic
all require that claim limitations 1(c), 1(d), and 1(e) must be practiced in sequential order on the
same pair of video frames.
2.

The ’230 Patent’s
Construction

Specification

Supports

the Court’s

Because the Asserted Claims’ plain language demonstrates the claim steps must be
performed in a particular order, this Court need not look to the specification for further guidance.
See Hytera Commc’ns., 841 F. App’x at 218–19 (“Because we conclude that the claim language
demonstrates the order of the steps, we need not look further into the specification.”) (citing Altiris,
318 F.3d at 1369); Altiris, 318 F.3d at 1369–70 (describing a two-part test in which a court first
“look[s] to the claim language to determine if, as a matter of logic or grammar, they must be
performed in the order written,” and then “[i]f not, [the court] next look[s] to the rest of the
specification to determine whether it directly or implicitly requires such a narrow construction”)
(internal quotations omitted). Nevertheless, inspection of the specification corroborates this
Court’s construction of the Asserted Claims.
As an initial matter, the specification repeatedly mentions an “image-based check”
designed to verify and, if necessary, correct the alignment created using solely IMU motion data.
See, e.g., ’230 patent at 10:5–15 (“[T]he IMU-based calculation for position and rotation of
weapon view 74 within display 70 is checked using an image-based method.”); id. at 10:21–29

67

See Markman Op., 154 Fed. Cl. at 627 (construing “based on a comparison of data from the first
and second video source images” in claim limitations 1(d), 15(d), and 29(d) to mean “based on a
comparison of image data (e.g., content and contrast) from the first and second video source
images”) (emphasis added).
110

(“To address [bias drift] concerns, the relative orientation of goggles 11 and scope 17 can be
independently deduced by processing image data from image generator 57 and scope 17 if there is
sufficient image content and contrast and if similar imaging technologies . . . are used. By checking
the IMU-based position and image rotation calculations using an image comparison, the manner
in which data from IMU sensors is used can be periodically recalibrated and the effects of bias
drift, etc. reduced.”); id. at 11:39–45 (“If the image-based check passes, the values of the IMUbased rotation matrix (and thus, the center for weapon view 74 predicted by that IMU-based
rotation matrix) are verified . . . .”); id. at 11:52–55 (“[T]he image-based check verifies the position
for the scope image calculated with IMU data . . . .”); id. at 13:21–23 (“[C]omputer 30 performs
image-based checks for points of interest in goggles image 82 that are slightly offset from a center
calculated from IMU data.”); id. at 18:38–42 (“Other embodiments also include numerous
variations on the above-described methods for using a comparison of a scope image and a googles
image to check an IMU-based location and rotation for that scope image within that goggles
image.”). These excerpts confirm that the motion-based alignment resulting from the “identify”
operation in claim limitation 1(c) contains uncertainty that is eliminated through the “evaluate”
operation in claim limitation 1(d).
Statements in the specification likewise reiterate that the motion and image-based
alignments embodied in claim limitations 1(c) and 1(d), respectively, must occur prior to the
display operation embodied in claim limitation 1(e). See, e.g., id. at 7:19–25 (“[T]he location and
rotation of weapon view 74 within user display 70 is determined by computer 30 based on output
from sensors 13 and 18 and based on comparison of the scope image with the goggles image.”).
The specification’s summary describes this process most concisely. The summary describes a
computer system that receives images from two independently movable video sources with sensors

111

designed to “indicate[] the spatial orientations” of the two sources. ’230 patent at 1:58–66. The
system “[u]se[s] the sensor data” to first identify an area of potential overlap between two video
sources. Id. at 1:66–2:6. The system then verifies the accuracy of this location, as “[d]ata from
the two images are then compared in order to evaluate the location determined from the sensor
data. The sensor-based location is either confirmed, or a new location is found based on additional
image comparisons.” Id. at 2:6–9. “Once a location is selected (either a confirmed sensor-based
location or a location found using image comparison), the two images are displayed such that the
second source image (or a portion of that image) overlays a corresponding portion of the first
source image.” Id. at 2:9–15 (emphasis added).
Furthermore, the patent indicates that “[t]he present invention is illustrated by way of
example . . . in the figures” that accompany the specification. Id. at 2:35–38. These figures
likewise confirm the Court’s construction of the Asserted Claims. For example, Figures 8A
through 8K “illustrate checking and/or correcting an IMU-based position for one video image
within another video image.” Id. at 2:57–59. Similarly, Figures 9A through 9C “illustrate
correction of an IMU-based position calculation based on image comparison results.” Id. at 2:60–
61. Thus, Figures 8A through 9C further corroborate that the invention is designed to correct
motion-based alignments performed through the claims’ “identify” operation by using imagebased alignments found in the claims’ “evaluate” operation.
Figures 5A, 5B, 7, 11 and 14 depict “a flow chart explaining operation of the system.” Id.
at 2:48–49, 2:55–56, 2:63–64, 3:4–5. This embodiment of the patented invention, discussion of
which occupies much of the specification’s narrative portion, describes in detail how devices under
the patent step through the motion-based identification, followed by the image-based evaluation,
and finally display the aligned video frames. See, e.g., id. at 8:21–42 (describing how the device

112

receives pitch, yaw, and roll orientation data from IMU sensors, which “are used to create an IMUbased rotation matrix” that “calculate[s] a location (i.e., horizontal and vertical position) and an
image rotation for the scope image within the goggles image”); id. at 10:5–15 (“In block 117, the
IMU-based calculation for position and rotation of weapon view 74 within display 70 is checked
using an image-based method. This permits computer 30 to adjust the manner in which IMUbased positions and rotations are calculated, thereby correcting for bias drift and helping to
maintain proper registration of the scope image within the goggles image.”); id. at 11:39–45 (“If
the image-based check passes, the values of the IMU-based rotation matrix (and thus, the center
for weapon view 74 predicted by that IMU-based rotation matrix) are verified, and computer 30
proceeds to block 204 on the ‘yes’ branch. If the image-based check fails, computer 30 proceeds
on the ‘no’ branch to block 206.”); id. at 13:10–23 (“[A] failed image-based check in block 202
indicates that the IMU-based location for scope image 302 within goggles image 82 may be
incorrect. In other words, the scope image and the part of the goggles image over which computer
30 intends (based on IMU data) to overlay the scope image do not sufficiently represent the same
part of the external environment. . . . [C]omputer 30 performs image-based checks for points of
interest in goggles image 82 that are slightly offset from a center calculated from IMU data.”); id.
at 15:22–25 (noting that after the system has completed the image-based check of the motionbased alignment, the “computer 30 proceeds to block 119 of FIG. 5B. In block 119, the scope
image is cropped, resized and/or rotated. The resulting image is then overlaid on the goggles image
as the weapon view (block 121)”); id. at 17:54–57 (“Once the proper location and orientation for
the scope image are deduced, the scope image can be magnified and cropped prior to overlay as
the weapon view.”).

113

The specification thus corroborates this Court’s construction that claim limitations 1(c),
1(d), and 1(e) must be performed in sequential order on the same pair of frames. This Court notes,
however, that it is not limiting claim 1 to certain embodiments within the specification. Rather,
the specification as a whole merely supports what the plain language of claim 1 requires:
performance of claim limitations 1(c), 1(d), and 1(e) in sequential order on a single pair of video
frames.
3.

SAIC’s Arguments Against the Alleged Indefiniteness of the
’230 Patent Support the Court’s Construction

The Court’s construction is also consistent with statements made in SAIC’s briefing and at
Oral Argument to combat Defendants’ respective Motions for Summary Judgment for Invalidity
based on Indefiniteness. See generally MSFT MSJ Inv.; MSFT MSJ Inv. – SAIC Resp.; L3/Gov.
MSJ Inv.; L3/Gov. MSJ Inv. – SAIC Resp. SAIC confirmed the term “potentially represents” in
claim limitation 1(c) denotes uncertainty in the motion-based alignment from the “identify”
operation that is later corrected through the “evaluate” operation in claim limitation 1(d). See, e.g.,
OA Tr. at 57:9–25 (SAIC Counsel: “‘Potentially represents’ is nothing more than I have my IMU
data and it may represent something, the first video image and a portion of the second video image,
but I need to confirm that. I need to evaluate that in step (d). That's all ‘potentially’ means. . . .
It's a preliminary calculation that's subject to evaluation in step (d). . . . Preliminary, potentially,
that's all it means.”); id. at 65:12–14: (SAIC counsel discussing the term “potentially” as used in
claim limitation 1(c), and noting “we know from the claim scope or the claim context it just means
a preliminary one.”); id. at 76:3–6 (SAIC Counsel: “We have (c) as the identify step, and we are
looking at whether this IMU data potentially represents, preliminarily represents a portion of the
second image.”); id. at 76:18–24 (SAIC Counsel: “So they are preliminary. They are potential
because the inventor said, wait, wait, we got to check this in step (d). And that's exactly what they
114

said: We have to use an image-based comparison to confirm, to evaluate the IMU, and that's why
we are not making a final determination in (c).”).
Additionally, SAIC repeatedly reiterated the claims recite the “identify,” “evaluate,” then
“display” order of operations, noting on numerous occasions that the “display” operation in claim
limitation 1(e) is the “output” of the device’s identification and evaluation processes. See, e.g.,
OA Tr. at 58:11–21 (SAIC Counsel: “Because there's error and drift in these sensors, it's potential,
it may be and [is] subject to the evaluation step. Then once we evaluate that data, the image
comparisons, and use that to line up with the IMU, then we get to the output, which is the display
step (e). . . . That’s the output.”); id. at 60:15–18: (SAIC Counsel: “(e) is just simply the output of
(c) and then the evaluation of (d). So really we should be focusing on (d) to figure out (e).”); id.
at 77:7–13 (SAIC Counsel: “‘Potentially represents’ is the first step. Remember Your Honor
talked about the two-step process that the inventors came up with in the ’230. The first one is we
look at IMU data. The second is we confirm that through a comparison of images, and in this way
we crosscheck it. And then it comes to the display step if it passes.”); id. at 77:18–78:8 (SAIC
Counsel: “[I]t potentially represents because we are not making that final determination . . . .
There’s no overlay until you confirm step (c) with step (d), and then output is the display.”).
As discussed above, SAIC raised compelling arguments regarding the ordering of the
“identify,” “evaluate,” and “display” operations, and the specification’s respective descriptions of
these operations, to refute Defendants’ indefiniteness claims. See supra Section III(C)(b). Indeed,
the only way the ’230 patent can avoid indefiniteness concerns is to construe the claims to recite
this order, as SAIC counsel correctly demonstrated. Id. However, “[c]laim terms must be
construed the same way for the purpose of determining invalidity and infringement.” TVIIM, LLC
v. McAfee, Inc., 851 F.3d 1356, 1362 (Fed. Cir. 2017); see Amgen Inc. v. Hoechst Marion Roussel,

115

Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“It is axiomatic that claims are construed the same
way for both invalidity and infringement.”). By emphasizing that the ordering of the claim
limitations renders claim 1 definite, SAIC concedes an order likewise applies in the infringement
context. Accordingly, to maintain an internally consistent construction of the patent, this Court
must conclude that the ordering theory that insulates claim 1 from indefiniteness concerns likewise
applies for infringement purposes. 68

68

At Oral Argument, the Court questioned SAIC on how to reconcile its indefiniteness position,
which relies heavily on the notion that claim limitations 1(c), 1(d), and 1(e) must occur in that
order, with its infringement position that the claims do not require an order. See OA Tr. at 109:15–
110:5. In response, SAIC clarified its view that while no order is required for individual video
frames, as Defendants argue, the patent does contemplate an order for a continuous video feed,
which is received in claim limitation 1(a). See id. at 110:6–15 (SAIC Counsel: “[T]here’s not that
order for an individual video frame. There is that order for a video feed, which is what is being
received in step (a). . . . It's a series of frames. . . . [I]t is true that what the claim requires is an
identification step on a video feed and a display of that video feed. That's the point of the
invention.”). Thus, according to SAIC, “there is no requirement in the claims or the specification
that you do (c), (d) and (e) in that order for every single still image.” Id. at 111:16–20.
As an initial matter, SAIC supported this argument with opinions from Dr. Bajaj provided in the
now-stricken Supplemental Bajaj Declaration. See, e.g., MSFT MSJ NI – SAIC Resp. at 33
(“According to Dr. Bajaj, because the augmented reality systems of the Asserted Patent receive
and display video streams, ‘a POSA would have understood that these systems operate in a
continuous looped fashion, where steps illustrated in the flow charts can be reordered, combined,
split, replaced, etc.’”) (quoting Supp. Bajaj Decl. at ¶ 31) (internal quotations omitted). In contrast,
neither the Bajaj Opening Report nor the Bajaj Appendix A draw the same distinction between
continuous video feeds and individual video frames that SAIC now alleges. See generally Bajaj
Op. Rpt.; Bajaj App. A. Therefore, now that the Supplemental Bajaj Declaration has been stricken,
SAIC may no longer rely on Dr. Bajaj’s opinions in that Supplemental Declaration to provide
insight into how a POSITA would interpret the claim language to support the feed versus frame
distinction.
Further, SAIC’s argument directly contradicts statements SAIC made in its Reply in support of its
own Motion for Summary Judgment of Infringement, in which SAIC described the claim language
as applying to “a given image frame pair.” SAIC MSJ Inf. – SAIC Reply at 17 (“The plain reading
of the independent claims is that the controller receives video images from two sources and, for a
given image frame pair, the identify and evaluate steps are performed as recited . . . and the display
step is performed.”). Additionally, construing “video images” to mean “continuous video feed” is
inconsistent with this Court’s prior Markman Opinion, which construed the terms “video images,”
“video source image,” and “video data of images” to mean “digital, analog, or nonstandard video
116

4.

Expert Testimony Extrinsic to the ’230 Patent Corroborates the
Court’s Construction

Other evidence extrinsic to the patent likewise confirms that the appropriate construction
for claim limitations 1(c), 1(d), and 1(e) requires these steps be performed in their stated order on
a single pair of frames. See Helmsderfer, 527 F.3d at 1382 (“A court may look to extrinsic
evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent
from the intrinsic record.”). To begin, Microsoft’s and L3’s expert, Dr. Villasenor, has expressed
opinions throughout his various expert reports that support the Court’s construction for claim
limitations 1(c), 1(d), and 1(e). See, e.g., Villasenor Reb. Rpt. ¶ 54 (noting testimony from the
’230 patent’s inventor, General Scales, “corroborates that the asserted claims of the ’230 patent
claim a guess-and-check approach where a potential overlap of a given set of images is first
identified, then evaluated using a comparison of image data, and then that same set of images is
displayed”) (emphasis added); Villasenor App. D ¶ 7 (“[T]he structure and content of the claims,
as confirmed by the explanation of the invention in the specification, require that [claim limitations
1(c), 1(d), and 1(e)] be performed on the same set of two images in the order set forth in the
Asserted Claims.”); id. ¶ 23 (“[A]ll of the Asserted Claims of the ’230 patent recite a particular
approach for aligning a set of image frames that requires three key elements — identify, evaluate,
and display — that are all performed on the same set of ‘first’ and ‘second’ ‘video source image[s]’
in a particular logical sequence . . . .”) 69; id. ¶ 69 (“[T]he entire concept of the alleged invention as
described throughout the specification and claimed in every Asserted Claim is that a set of two
frames.” Markman Op., 154 Fed Cl. at 614–19 (emphasis added).
remains unconvinced by SAIC’s argument.

Accordingly, this Court

69

Following this statement in paragraph 23, Dr. Villasenor quotes the claim limitations, with
certain terms emphasized, including the indefinite and definite articles that precede the term “video
source image” in each claim limitation. See Villasenor App. D. ¶ 23.
117

images is first potentially aligned with motion data, second evaluated with image data analysis,
and lastly, the overlaid images are displayed using the alignment arising from this identification
and evaluation.”); Villasenor App. C ¶ 63 (“[I]n the context of the ‘identify’, ‘evaluate’, and
‘display’ limitations of the asserted claims, the claimed invention requires that the system
‘evaluate’ using image data from the same two video frames for which the potential overlap was
determined in the ‘identify’ step. In addition, the claimed invention further requires that the system
‘display’ the same two video frames that were analyzed in the ‘identify’ and ‘evaluate’ steps, using
the alignment resulting from those operations.”). 70 Expert testimony “may be useful in claim
construction” so long as it is not “used to diverge significantly from the intrinsic record.” See
Genuine Enabling Tech. LLC v. Nintendo Co., Ltd, 29 F.4th 1365, 1373 (Fed. Cir. 2022).
Likewise, SAIC’s expert, Dr. Bajaj, expressed opinions supporting Microsoft’s and L3’s
ordering theory. In his rebuttal expert report on invalidity, Dr. Bajaj differentiates the ’230 patent
from prior art by emphasizing how the prior inventions did not contemplate performing the
“identify,” “evaluate,” and “display” operations in the patent’s prescribed order on a single set of
frames. See, e.g., Bajaj Reb. Rpt. ¶ 405 (opining that the Equinox prototype “does not qualify as
prior art to the ’230 patent” because the prototype did not “us[e] a comparison of image data frames
to evaluate a motion-data based identification of portions of the two video image frames that
potentially represent the same part of the external environment and correctly overlaying those

70

This statement is preceded by paragraph 62, which quotes the asserted claim limitations and
emphasizes the indefinite and definite articles that precede the term “video source image” in the
claim limitations. See Villasenor App. C ¶ 62 (“Asserted independent claims 1, 15, and 29 of the
’230 patent all require that the claimed system, method, and ‘machine-readable medium’: (1)
identify ‘a part of a first video source image … represented in a part of a second video source
image’; (2) evaluate that identification ‘based on a comparison of data from the first and second
video source images’; and (3) display ‘at least a portion of the first video source image and at least
a portion of the second video source image….’”) (emphasis and omissions in original).
118

frames (rather than correcting the display of future frames) based on that analysis”) (emphasis
added); id. ¶ 457 (arguing evidence that

(emphasis added); id.
¶ 458 (“[T]here is still no evidence that such a process was used to ‘evaluate, … the identification
performed in operation (c)’—i.e., the identification ‘based on the received motion data, a part of a
first video source image that potentially represents a portion of the external environment
represented in a part of a second video source image’ or to ‘display’ corresponding regions of two
video images after having performed the ‘identify’ and ‘evaluate’ steps.”) (emphasis added); id.
(arguing a witness could not “sufficiently describe, much less corroborate, how the Equinox
system code worked,

(emphasis added).
In his attempt to distinguish the ’230 patent from the prior art, Dr. Bajaj repeatedly
confirmed the patent requires claim limitations 1(c), 1(d), and 1(e) be practiced in the precise
manner Microsoft and L3 proposed in their respective summary judgment motions. See MSFT
MSJ NI at 6–7, 33–42; L3 MSJ NI at 40–44. Curiously, these opinions conflict with Dr. Bajaj’s
statements in his Opening Report on infringement and Appendix A regarding whether the claim
limitations recite a specific order. 71 However, SAIC may not adopt conflicting constructions for

71

As noted (see supra Section II(C)(a)(2)), in the Bajaj Opening Report and the Bajaj Appendix
A, Dr. Bajaj asserted, albeit with little formal analysis, that the claim language does not require
the claims be practiced in any particular order. See, e.g., Bajaj Op. Rpt. ¶ 79 (“The specification
contemplates that the patented system’s operations may be reordered and/or that additional steps
may be performed. For example, additional operations may be performed before identification,
119

its Asserted Claims based on the theory that best suits its case at a particular moment. See
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent
may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find
infringement.”) (internal quotations omitted). Based on the patent’s intrinsic evidence, this Court
concludes Dr. Bajaj’s opinions in his Rebuttal Report on invalidity reflected the correct
construction. See Genuine Enabling Tech., 29 F.4th at 1373. 72
Additionally, the intrinsic evidence Dr. Bajaj cites to support his infringement opinions
that the claims do not recite a specific order prove unilluminating. To support his infringement
position that claim limitations 1(c), 1(d), and 1(e) do not require an order, Dr. Bajaj has only
identified two pieces of intrinsic evidence, both from the ’230 patent’s specification. See Bajaj
App. A ¶ 155 (“Microsoft misinterprets the claims of the ’230 Patent as well as the specification.
For example, the specification provides an embodiment of a system in Figures 5A and 5B. The
specification makes plain, ‘The steps shown in FIGS. 5A and 5B (and in other flow charts
described below) can be reordered, combined, split, replaced, etc. . . . Many aspects of system 10
operation could be accommodated on multiple independently-running parallel program threads or

additional operations may be performed in between identification and evaluation, additional steps
may be performed between evaluation and display, and/or display could occur before
evaluation.”); Bajaj App. A ¶¶ 154–55 (expressing disagreement with Microsoft’s position that
“the display element is not met,” and arguing that “Microsoft misinterprets the claims of the ’230
Patent as well as the specification”); id. ¶ 205 (“I have also been informed by counsel that as a
general rule, unless the steps of a method claim actually recites an order, the steps are not ordinarily
construed to require one, absent an express or implicit order requirement in the claim language or
as a matter [of] logic or grammar.”).
72

See Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995), aff'd, 517 U.S.
370 (1996) (“[W]here the legal expert's view of how the patent should be construed conflicts with
the patent document itself, such conflict does not create a question of fact nor can the expert
opinion bind the court or relieve the court of its obligation to construe the claims according to the
tenor of the patent.”).
120

as processes running parallel program threads or as processes running in parallel on an ASIC, an
FPGA, multiple processors, etc.’”) (omission in original) (quoting ’230 Patent at 7:47–55); Bajaj
Op. Rpt. ¶ 79 n.56 (“It is to be understood that the subject matter defined in the appended claims
is not necessarily limited to the specific features or acts described above.”) (quoting ’230 patent at
24:14–16). However, these statements are contrary to the plain language, grammar, and logic of
the Asserted Claims for the reasons discussed above and reflect an embodiment broader than the
claimed invention. See supra Section IV(B)(b)(1)–(2).
Indeed, Dr. Bajaj does not undertake any substantive analysis of the actual claim language
to support his opinion that the claim limitations need not be performed in any particular order. 73
This Court may not adopt a construction contrary to the claim language based solely on two
discrete references in the specification. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., Inc.,
285 F.3d 1046, 1052 (Fed. Cir. 2002) (quoting McClain v. Ortmayer, 141 U.S. 419, 424 (1891))
(“The claim is the measure of his right to relief, and while the specification may be referred to to
limit the claim, it can never be made available to expand it.”); MicroStrategy, 429 F.3d at 1351
(“It is a bedrock principle of patent law that the claims of a patent define the invention to which
the patentee is entitled the right to exclude.”) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc)) (other internal quotations omitted).
5.

The Evidence upon which SAIC Relies to Support its Theory Is
Either Consistent with the Court’s Construction or Is
Uncompelling

In its briefing and at Oral Argument, SAIC likewise cites various pieces of intrinsic
evidence purportedly supporting its view that the claims do not require an order, all of which are

73

The only substantive analysis Dr. Bajaj performed over the claim language as it relates to
Microsoft’s and L3’s ordering theory appears in the now-stricken Supplemental Bajaj Declaration,
which accordingly cannot be used. See supra Section II(C)(b).
121

either uncompelling or entirely consistent with this Court’s construction. For example, SAIC
argues that dependent claim 11 should inform this Court’s understanding of whether claim
limitations 1(c), 1(d), and 1(e) require an order. See ’230 patent at 26:1–4 (“11. The system of
claim 1, wherein the controller is further configured to adjust, based on the evaluation of operation
(d), the manner in which the controller makes the identification of operation (c).”); MSFT MSJ NI
– SAIC Resp. at 28–29 (“Claim 11 . . . contemplates a system in which the identify, evaluate, and
display steps are not performed on the same pair of video frames because the display element is
informed in part by the identify and evaluate elements of a previous set of video frames.”). At
Oral Argument, SAIC further elaborated that dependent claim 11 demonstrates the patent
contemplates a system that performs “multiple identification and multiple evaluation steps” prior
to displaying an image. See OA Tr. at 108:13–109:11 (“[Y]ou would do step (c); you would then
do step (d); you would do step (c) again before you would do a display. . . . What claim 11 covers
is you do an identification step. You check that identification step in step (d), and then you go
back and you do the identification step again.”).
However, this argument is entirely consistent with the Court’s construction, which does
not require that every frame proceed immediately through the “identify,” “evaluate,” and “display”
operations without any intervening events. The only limitation this Court’s construction adopts is
that frames must undergo the “display” operation at some point after those same frames undergo
the “identify,” and “evaluate” operations. Thus, a device practicing the ’230 patent could toggle
between the “identify,” and “evaluate” operations numerous times, so long as every pair of frames
that reaches the “display” operation has at some point been “identified” and “evaluated.” See OA
Tr. at 130:18–21 (Microsoft Counsel: “I thought I heard counsel say that you don't need to do that
order every time, but our point is that the claim requires it at least once . . . .”). This is also

122

consistent with the portion of the specification that indicates “the operations shown in [Figures 5A
through 5B] would not necessarily be performed the same number of times as is suggested by the
flow chart.” ’230 patent at 7:55–57.
SAIC references other portions of the specification to support its position that the claims
do not recite a particular order, but these too are unavailing. SAIC identifies two excerpts that,
according to SAIC, demonstrate that the patent contemplates a system with continuously looping
processes for the “identify,” “evaluate,” and “display” operations that occur at different rates. For
example, SAIC highlights that “data from various sources may be updated at different rates.”
MSFT MSJ NI – SAIC Resp. at 30 (citing ’230 patent at 18:25–37). However, information
regarding the speed at which data is received by the system does not provide insight into how
quickly or frequently the data is processed or the order in which such processing takes place.
Similarly, SAIC asserts “[t]he specification provides an exemplary embodiment . . . where the
display element continuously loops, yet the identify and evaluate elements may occur only once
every 10-15 minutes or longer.” Id. (citing ’230 patent at 18:38–63). However, SAIC has
misconstrued the specification’s language. Far from stating that the “identify” and “evaluate”
operations occur every 10 to 15 minutes while the display operation is happening continuously,
this portion of the specification merely states “a procedure such as that of [Figure] 7 works well .
. . if the scope and goggles point in the same direction at least once every 10 to 15 minutes.” ’230
patent 18:38–63. In other words, this excerpt provides an accuracy statistic about a proposed
embodiment of the “evaluate” operation and does not provide any indication of how frequently the
“identify” or “evaluate” operations occur relative to the “display” operation.
Further, SAIC notes the specification states that while portions of the claims “are prefaced
with letter or number references for convenience,” “use of such references does not imply a

123

temporal relationship not otherwise required by the language of the claims.” OA Tr. at 100:18–
25 (citing ’230 patent at 24:18–22); MSFT MSJ NI – SAIC Resp. at 30. However, this statement
is entirely uncontroversial for two reasons. First, while the specification makes clear that no order
is required simply because the claim lists method steps with letter references, neither Microsoft
and L3 nor this Court contend the mere presence of letter references justifies construing an order
to the claim limitations. Second, and perhaps more importantly, the specification explicitly states
that the letter references do not “imply a temporal relationship not otherwise required by the
language of the claims.” ’230 patent at 24:18–22. As this Court thoroughly addressed above, the
language of the claims themselves clearly recites an order. See infra Section IV(B)(b)(1). It is on
this basis, not due to the presence of letter references, that the Court makes its determination.
c.

Conclusion – The Ordering Theory of Non-Infringement

For the foregoing reasons, this Court agrees with Microsoft and L3 that claim limitations
1(c), 1(d), and 1(e), and the corresponding claim limitations in independent claims 15 and 29,
recite a specific order. This Court holds the language, grammar, and logic of the Asserted Claims
all demonstrate that the appropriate construction requires claim limitations 1(c), 1(d), and 1(e) to
be performed in that order on a single pair of frames. However, it is important to convey the proper
bounds of this holding. A POSITA would not understand the claim language to mean that every
frame that passes through the claimed system must proceed immediately through the “identify,”
“evaluate,” and “display” operations without any intervening events. Indeed, independent claims
1, 15, and 29 are all “comprising” claims. See ’230 patent at 24:25 (“A system, comprising . . .
.”); id. at 26:27 (“A method, comprising . . . .”); id. at 28:17–19 (“A non-transitory machinereadable medium having machine-executable instructions for performing a method, comprising . .
. .”). It is a well-known principle of patent law that comprising claims are construed as “open-

124

ended,” meaning “[t]he addition of elements not recited in the claim cannot defeat infringement.”
Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1372–73 (Fed. Cir. 2005); CIAS, Inc. v.
All. Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007) (noting that comprising claims do not
“exclude the possible presence of additional elements or steps”); Invitrogen Corp. v. Biocrest Mfg.,
L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim
indicates that the claim is open-ended and allows for additional steps.”).
Instead, construing the asserted claims to require that claim limitations 1(c), 1(d), and 1(e)
be performed in that order merely means the following: each pair of frames that does successfully
reach the “display” operation in claim limitation 1(e) must have first undergone the “identify” and
“evaluate” operations in claims 1(c) and 1(d), respectively, at some point prior to being displayed.
Said differently, the asserted claims contemplate a system that cannot display a pair of frames
without having first identified and evaluated those frames. Accordingly, the Court adopts the
following construction: for a device to infringe independent claim 1 (or 15, or 29), the “display”
operation detailed in claim limitation 1(e) must always be preceded by the “identify” and
“evaluate” operations recited in claim limitations 1(c) and 1(d), respectively, for a single pair of
video frames.
C.

Microsoft’s Motion for Summary Judgment of Non-Infringement

Microsoft moves for summary judgment that its accused products, the Microsoft
devices, do not infringe claims 1, 5, 12, 29, and 30
(collectively, Microsoft Asserted Claims) of the ’230 patent. 74 See MSFT MSJ NI; see also Bajaj
Op. Rpt. ¶ 21. Microsoft argues its

devices do not infringe the Microsoft Asserted Claims

74

Though SAIC alleges that Microsoft’s
Products
infringe claims 1, 5, 12, 29, and 30 of the ’230 patent, SAIC only alleges infringement of claims
29 and 30 against Microsoft’s
Products. See Bajaj Op. Rpt. ¶ 21.
125

; Farid Rpt. ¶ 18
; Villasenor App. D ¶ 19

SAIC’s infringement allegations specifically challenge the

implemented

by Microsoft’s accused devices. See Bajaj App. A ¶ 11

; MSFT MSJ NI at 5

128

130

132

133

134

135

The parties do not dispute how Microsoft’s accused devices operate. See, e.g., MSFT MSJ
NI – SAIC Resp. at 31 (favorably citing

Decl. ¶ 2.a)

; MSFT MSJ NI at 5 (“No material dispute
exists regarding how the Accused Products
. The parties merely differ on the plain meaning of the Asserted Claims.”).
Rather, the parties dispute whether Microsoft’s accused devices actually perform each and every
claim limitation based on the proper construction of the claims. MSFT MSJ NI – SAIC Resp. at
31; MSFT MSJ NI at 5. Though the question of whether Microsoft’s accused devices infringe the
’230 patent is a question of fact, “a grant of summary judgment of non-infringement is proper
when no reasonable factfinder could find that the accused product contains every claim limitation.”
Medgraph, 843 F.3d at 949. Microsoft, as the moving party, “bears the burden of showing that
there are no material facts in dispute, and all reasonable inferences must be resolved in the
nonmovant’s favor.” Herman, 7 F. App’x at 943 (citing Rockwell Int’l Corp. v. United States, 147
F.3d 1358, 1361–62 (Fed. Cir. 1998)).
As noted, the proper construction of the Asserted Claims requires claim limitations 1(c),
1(d), and 1(e) to occur in that order on a single pair of frames. See supra Section IV(B)(b)–(c).
Indeed, as noted, SAIC has asserted numerous times that the appropriate construction of the
asserted claims, necessary to avoid indefiniteness concerns, requires the 1(c) “identify,” 1(d)
“evaluate,” and 1(e) “display” operations be performed in that order on an individual pair of scope
and goggles images. See, e.g., MSFT MSJ Inv. – SAIC Resp. 25 (“Limitation 1(c) is met when a

137

controller executes an algorithm that uses motion data associated with independently movable
video sources to identify the relative orientation of the video sources. Limitation 1(e) is met when
a controller displays images after an image data analysis algorithm finds a ‘match’ point between
(prior or current) image frame pairs that is used to confirm or adjust a rotation matrix that
determines how images are overlayed.”); OA Tr. at 58:8–19 (SAIC Counsel: “[W]e take in IMU
data. We perform calculations that are -- we do these rotational matrices. It's all laid out in the
specification. . . . Then once we evaluate that data, the image comparisons, and use that to line up
with the IMU, then we get to the output, which is the display step (e).” The Court: “And at that
point, that’s sort of a final representation, I’ll call it?” SAIC Counsel: “That’s the output.”); id. at
77:7–13 (SAIC Counsel: “‘Potentially represents’ is the first step. . . . The first one is we look at
IMU data. The second is we confirm that through a comparison of images, and in this way we
crosscheck it. And then it comes to the display step if it passes.”).
Given this construction, and for the reasons stated below, this Court holds Microsoft’s
accused devices do not infringe the Microsoft Asserted Claims of the ’230 patent. Microsoft has
met its burden at summary judgment by adequately demonstrating that its products do not practice
the “identify,” “evaluate,” and “display” operations in the ’230 patent’s required order on a single
pair of video frames, and SAIC has failed to raise any genuine disputes of material fact that would
otherwise preclude summary judgment on this issue. 82

82

As Microsoft has met its burden in proving that its accused devices do not perform the “display”
operation in the order recited in the ’230 patent, this Court need not address Microsoft’s alternative
theories of non-infringement centered on whether its
Products perform the
“identify” operation “based on the received motion data.” See MSFT MSJ NI at 24–33, 42–44; VFormation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005) (“Literal
infringement requires that each and every limitation set forth in a claim appear in an accused
product.”); MicroStrategy, 429 F.3d at 1352 (“If . . . even one claim limitation is missing or not
met, there is no literal infringement.”).
138

operations. MSFT MSJ NI at 33

; id. at 40

Thus, Microsoft argues that even under
SAIC’s own theories of infringement, Microsoft’s accused devices fail to practice each and every
claim limitation in the Microsoft Accused Claims because its devices do not
Id. at 33, 40; see V-Formation, Inc. v. Benetton Group SpA, 401 F.3d
1307, 1312 (Fed. Cir. 2005). Microsoft is correct.
The record overwhelmingly supports ruling in favor of Microsoft here. First, Microsoft
has presented substantial fact and expert evidence supporting its position that its devices do not

140

Microsoft likewise submitted expert testimony from Drs. Farid and Villasenor to support
its ordering theory of non-infringement. See generally Farid Rpt.; Villasenor App. D. Through
the lens of source code analysis, Dr. Farid reiterated that Microsoft’s devices

141

In particular, Dr. Farid explained that

This testimony confirms Microsoft’s argument that Microsoft’s accused devices

Dr. Villasenor’s opinions also confirm Microsoft’s ordering theory of non-infringement.
In the Villasenor Appendix D, Dr. Villasenor opined that

142

In his report, Dr. Villasenor challenges Dr. Bajaj’s reading of the Microsoft Asserted
Claims, noting that

In contrast, Dr. Villasenor expresses
the view that “the entire concept of the alleged invention as described throughout the specification
and claimed in every Asserted Claim is that a set of two images is first potentially aligned with
motion data, second evaluated with image data analysis, and lastly, the overlaid images are
displayed using the alignment arising from this identification and evaluation.” Id. ¶ 69.

In summary, Microsoft has submitted substantial fact and expert evidence to support its
theory that its accused devices do not
Microsoft has demonstrated that its accused devices do not
practice each of the Microsoft Asserted Claims based on their proper construction, which includes

143

an ordering component. Thus, this Court holds that Microsoft has met its burden on summary
judgment for non-infringement.
2.

SAIC has Failed to Identify Any Genuine Disputes of Material
Fact that Would Preclude Summary Judgment in Microsoft’s
Favor

As noted, once Microsoft, as the movant, proffered sufficient evidence to make a prima
facie showing at summary judgment, “the burden of production then shifted to [SAIC] to identify
genuine issues that preclude summary judgment.” Optivus Tech., 469 F.3d at 990; see Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Once the district court
determined that [the movant] satisfied its burden . . . it was incumbent upon . . . the nonmoving
party, to produce some evidence refuting [the movant’s] claim.”). SAIC has failed to meet this
burden, as none of the evidence it has identified creates a genuine dispute of material fact regarding
whether Microsoft’s products perform the “identify,” “evaluate,” and “display” operations in that
order on a single pair of frames, even when viewed in the light most favorable to SAIC. See
McGinley, 262 F.3d at 1348.
To begin, SAIC fails to raise any genuine disputes of material fact in its Response brief
opposing Microsoft’s Motion for Summary Judgment of Non-Infringement. See generally MSFT
MSJ NI – SAIC Resp. Rather than express an opinion on the order in which Microsoft’s devices
perform certain operations, SAIC instead devotes substantial space in its Response to rebutting
Microsoft’s claim that the ’230 patent’s claim limitations even recite any particular order. 84 See
MSFT MSJ NI – SAIC Resp. at 27–31, 33–34; see supra Section IV(B)(b). This is despite its
84

Notably, many of the arguments raised in SAIC’s Response, including SAIC’s newly-disclosed
doctrine of equivalents theory, rely on the now-stricken Supplemental Bajaj Declaration. See, e.g.,
MSFT MSJ NI – SAIC Resp. at 14, 29–31, 33–34, 38–41 (referencing the Supplemental Bajaj
Declaration); see supra Section II(C)(b). Accordingly, SAIC may not rely on any of these
arguments to oppose Microsoft’s Motion for Summary Judgment of Non-Infringement.
144

statements to the contrary in briefing and at oral argument opposing Defendants’ summary
judgment motions concerning invalidity due to alleged indefiniteness of the ’230 patent. See supra
Sections III(C)(c), IV(B)(b)(3).
Additionally, SAIC argues that a genuine dispute of material fact exists “as to whether the
systems perform” in the manner Microsoft claims because “Microsoft attached a newly
executed declaration from Microsoft employee

detailing how the accused

Microsoft products allegedly operate. SAIC has not had the opportunity to cross-examine
on his new testimony.” MSFT MSJ NI – SAIC Resp. at 35; see id. (“[S]ummary
judgment on this issue before SAIC has had any chance to cross examine

on his

declaration is improper.”). This assertion, however, does not give rise to a genuine dispute of
material fact. Though this Court must resolve all “reasonable inferences . . . in the nonmovant’s
favor,” even a cursory review of the record clearly demonstrates the unreasonableness of SAIC’s
assertion. Herman, 7 F. App’x at 943 (citing Rockwell Int’l, 147 F.3d at 1361–62). The
Declaration was not “late-submitted,” nor was SAIC prejudiced by the submission of the
Declaration. Indeed, SAIC had the opportunity to depose

on August 4, 2022, prior

to the close of discovery, on the precise material covered in the February 27, 2023
Declaration, including the accused products’ source code concerning
generally

. See

Depo. Tr.; see supra Section II(C)(b). This Court need not accept SAIC’s

misleading portrayal of the record as indicative of a genuine dispute of material fact merely
because SAIC is the non-moving party. 85

85

For this same reason, SAIC’s assertions at Oral Argument that Microsoft has somehow failed to
meet its evidentiary burden at summary judgment by placing too much reliance on the information
contained in the
Declaration likewise fall short. See OA Tr. at 164:20–165:8 (“[T]he
description of how the system allegedly works is entirely from an interested witness who gave this,
I guess, not even testimony, who had conversations with Microsoft’s experts . . . so we are certainly
145

Further, SAIC’s expert testimony from Dr. Bajaj regarding Microsoft’s accused products
likewise fails to create any genuine disputes of material fact, as Dr. Bajaj offers little commentary
on whether Microsoft’s accused devices
During Dr. Bajaj’s deposition, when asked whether
he disputes that Microsoft’s accused devices
Dr. Bajaj acknowledged that

Bajaj Depo. Tr. at 117:21–118:14. When pressed further, Dr. Bajaj noted his
report demonstrates

Id. Thus, Dr. Bajaj’s testimony did not
focus on analyzing the order in which Microsoft’s accused devices performed certain operations.
In the Bajaj Appendix A, Dr. Bajaj does not meaningfully dispute Microsoft’s portrayal of
how its accused devices operate in relation to Microsoft’s ordering theory of non-infringement.
For example, Dr. Bajaj seems to acknowledge that

entitled to the opportunity to cross-examine these witnesses and seek the testimony from a
Microsoft employee which has not been subject to cross-examination . . . . [I]n addition to being a
waiver issue, it’s also a burden of proof issue for summary judgment.”). It is entirely appropriate
for Microsoft’s experts to rely on documentary evidence and testimony provided by Microsoft’s
Rule 30(b)(6) witness, who was deposed on the precise issues to which his testimony pertains.
This is particularly true when the underlying facts were disclosed during fact discovery through
deposition testimony and documentary evidence.
86

Curiously, this position contradicts Dr. Bajaj’s prior opinions reflected in his Rebuttal Report,
which strongly suggest his view that claim limitations 1(c), 1(d), and 1(e) must be performed in
that order. See Bajaj Reb. Rpt. ¶¶ 405, 457–58; supra Section IV(B)(b)(4) (discussing Dr. Bajaj’s
inconsistent position on whether the asserted claims require a particular order).
146

Id.
¶ 154. Yet, Dr. Bajaj does not engage in any analysis or commentary specific to Microsoft’s
devices or the order in which Microsoft’s devices perform
Instead, Dr. Bajaj merely states that Microsoft “misinterprets the claims of the ’230
patent as well as the specification,” and quotes an excerpt from the specification that purports to
contemplate

Id. ¶ 155 (quoting ’230 Patent at 7:49–55). In responding to a

motion for summary judgment, the non-moving party “can no longer rest on . . . mere allegations,
but must set forth by affidavit or other evidence specific facts, which for purposes of the summary
judgment motion will be taken as true.” FastShip, 892 F.3d at 1307–08 (quoting Lujan, 504 U.S.
at 561) (internal quotation marks omitted). “The requirement that the nonmovant must set forth
‘specific facts’ means that ‘[m]ere denials or conclusory statements are insufficient’ to survive
summary judgment.” Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1337 (Fed. Cir. 2010)
(quoting Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836
(Fed.Cir.1984)). Though SAIC purports to offer expert testimony on the subject, Dr. Bajaj’s
analysis does not articulate specific facts rebutting those alleged in Microsoft’s Motion for
Summary Judgment of Non-Infringement.

Thus, Dr. Bajaj’s conclusory remarks regarding

Microsoft’s ordering theory fail to create a genuine dispute of material fact countering Microsoft’s
prima facie showing that Microsoft’s devices do not

Indeed, the only portion of the Bajaj Appendix A SAIC specifically identifies as allegedly
giving rise to a genuine dispute of material fact seems instead to corroborate Microsoft’s view of
its accused system. See OA Tr. at 162:18–164:2. During Oral Argument, SAIC cited paragraphs

149

c.

Conclusion – Microsoft’s Motion for Summary Judgment of NonInfringement

In sum, to establish infringement, SAIC bears the burden of demonstrating Microsoft’s
devices practice each and every claim limitation, as that is what is required to prove literal
infringement. V-Formation, 401 F.3d at 1312 (“Literal infringement requires that each and every
limitation set forth in a claim appear in an accused product.”); MicroStrategy, 429 F.3d at 1352
(“If . . . even one claim limitation is missing or not met, there is no literal infringement.”).
Microsoft has provided substantial fact and expert testimony demonstrating that its accused
devices do not practice the

In contrast, even when viewed in the most favorable
light, SAIC’s proffered evidence fails to demonstrate a genuine dispute of material fact sufficient
to rebut Microsoft’s strong showing of non-infringement. Thus, based on the record before this
Court, “no reasonable factfinder could find that the accused product contains every claim
limitation,” making a grant of summary judgment in favor of Microsoft appropriate. Medgraph,
843 F.3d at 949.
For the foregoing reasons, Microsoft’s Motion for Summary Judgment of NonInfringement (ECF No. 343) is GRANTED.
D.

L3’s Motion for Summary Judgment of Non-Infringement

L3 moves for summary judgment that its accused product, the L3 ENVG-B system, does
not infringe claims 1, 5, 12, 18, 29, 30, 37, and 39 (collectively, L3 Asserted Claims) of the ’230
patent. See L3 MSJ NI; see also Bajaj Op. Rpt. ¶ 21. L3 argues its ENVG-B system does not
infringe the L3 Asserted Claims for three reasons. First, L3 contends its ENVG-B system does
not practice the “overlay” element of claim limitation 1(e). L3 MSJ NI at 5, 29–33. Second, L3
151

argues its ENVG-B system does not “identify . . . a part of a first video source image” using motion
data, as required by claim 1(c). Id. at 33–40. Third, L3 asserts its ENVG-B system does not
identify, evaluate, and display the same pair of video source images in the order required by claim
1. Id. at 40–44. SAIC contends there are genuine issues of material fact that preclude summary
judgment in L3’s favor. See L3 MSJ NI – SAIC Resp.
For the reasons explained below, summary judgment in favor of L3 is not appropriate.
Each non-infringement argument made by L3 implicates genuine disputes of material fact that may
not be adjudicated at the summary judgment stage. Accordingly, L3’s Motion for Summary
Judgment of Non-Infringement (ECF No. 341) is DENIED.
a.

Background – L3’s Motion for Summary Judgment of NonInfringement

L3 MSJ NI at
10; see also Villasenor Appendix C ¶ 6. The video feed captured by the ENVG-B is displayed on
an LED display viewed by a soldier. Villasenor Appendix C ¶ 7.

Id. ¶ 8.
Id.

Id. This feature—in which
the ENVG-B system displays to a user imagery from both the googles and the weapon—is called
RTA. Id.
Id. ¶ 9.

152

Villasenor Appendix C ¶ 10.

See L3 MSJ NI at 15 (“SAIC has only
; Bajaj Op. Rpt. ¶ 110 (confirming

Villasenor Appendix C ¶ 13.

Bajaj Op. Rpt. ¶ 108.
SAIC alleges
See Bajaj Op. Rpt. ¶¶ 21, 106, 110; see also SAIC Final
Infringement Contentions, dated June 30, 2022 (ECF No. 340-1) at 2–4. L3 engaged BAE
Systems, Inc. to develop the software implemented in L3’s ENVG-B system. See Bajaj Op. Rpt.
¶ 114; see also Villasenor Appendix C ¶ 5; L3 MSJ NI at 28. During fact discovery, SAIC deposed
several L3 and BAE fact witnesses. SAIC deposed Mr. Brandan Cirillo, a BAE engineer who
drafted source code for L3’s ENVG-B system. See L3 MSJ NI at 25–26; see Deposition of
Brendan Cirillo, dated August 2, 2022 (ECF Nos. 340-16, 344-8) (Cirillo Depo. Tr.). SAIC also
deposed Dr. Brandon Hombs, another BAE engineer who contributed to the ENVG-B system. See
L3 MSJ NI at 24; see Deposition of Brandon Hombs, dated August 10, 2022 (ECF No. 344-9)
(Hombs Depo. Tr.). Finally, SAIC deposed Mr. Jason Coffman, who was L3’s principal engineer
for the ENVG-B system. See L3 MSJ NI at 25; Coffman Depo. Tr. L3, for its part, deposed Gen.
John Scales, a named inventor on the ’230 patent. See L3 MSJ NI at 27; Scales Depo. Tr.

153

After fact discovery had concluded, SAIC submitted an expert report from Dr. Bajaj, which
set forth Dr. Bajaj’s opinion that L3’s ENVG-B system infringes the L3 Asserted Claims. See
Bajaj Op. Rpt. ¶¶ 148–212. In response, L3 submitted a rebuttal expert report from Dr. John
Villasenor, which contained Dr. Villasenor’s response to Dr. Bajaj’s opinions. See Villasenor
Appendix C. Dr. Villasenor concluded L3’s accused ENVG-B system does not infringe the L3
Asserted Claims. E.g., id. ¶ 3.
b.

Discussion – L3’s Motion for Summary Judgment of Non-Infringement

As discussed above, L3 identifies three reasons why its ENVG-B system does not infringe
the L3 Asserted Claims. See L3 MSJ NI at 29–44. For the reasons set forth below, this Court
concludes there is a genuine dispute of material fact whether the L3 Asserted Claims encompass
L3’s ENVG-B system. Accordingly, summary judgment is improper. See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (“[S]ummary judgment of noninfringement can only be granted if, after viewing the alleged facts in the light most favorable to
the non-movant, there is no genuine issue whether the accused device is encompassed by the
claims.”).
1.

Genuine Disputes of Material Fact Exist Regarding the
“Overlay” Element of Claim 1(e)

L3 first argues its ENVG-B system does not infringe the “overlay” element of claim
limitation 1(e). See L3 MSJ NI at 29–33. Claim limitation 1(e) recites a controller configured to
“display at least a portion of the first video source image and at least a portion of the second video
source image such that the second video source image portion overlays a corresponding region of
the first video source image portion.” ’230 patent at 24:45–51. This Court construed the term
“overlays” in accordance with its plain and ordinary meaning, e.g., “is over or upon.” Markman
Op., 154 Fed. Cl. at 624–27. During claim construction, this Court rejected L3’s contention that
154

“overlay” must mean “on top or in front of (e.g., superimposed),” thereby incorporating a
directional requirement into the term. Id. at 624–25. The Court’s construction of “over or upon”
includes the concept of “superimposing” but is not limited to that concept. Id. Accordingly, the
term “overlay” as used in the ’230 patent is not “limited to placing one image ‘on top of’ or ‘in
front of’ another” image. Id. at 625. Rather, “overlay” has its plain and ordinary meaning of “over
or upon.” Id. at 627.
SAIC contends the ENVG-B meets the “overlay” element of claim 1(e).

See L3 MSJ NI – SAIC Resp. at 23; Bajaj Op. Rpt.
¶¶ 191–94.

Bajaj Op. Rpt. ¶ 193. As Dr. Bajaj
explained,

Id. ¶ 194;
see also id. ¶ 193

SAIC supports its argument primarily
with opinions from Dr. Bajaj and Defendants’ documents and source code that reference the

155

process of

Bajaj Op. Rpt. ¶¶ 190–

212.
L3 disagrees with SAIC’s characterization of L3’s ENVG-B’s
L3 claims

L3 MSJ NI at
32.

Id. L3 thus argues its

Id. at 32–33; see OA Tr. at 183:24–184:1. As explained by L3’s expert witness Dr.
Villasenor,

Villasenor Appendix C ¶ 52; see
generally id. ¶¶ 38–61. L3 supports its argument with testimony from Dr. Villasenor and L3 fact
witnesses Mr. Cirillo, Dr. Hombs, and Mr. Coffman. See Villasenor Appendix C ¶¶ 38–61; Cirillo
Depo. at 60:16–66:24; Hombs Depo. at 19:5–13, 30:12–31:10, 46:16–49:18; Coffman Depo. at
235:10–239:18. L3 concludes that the undisputed evidence shows “the ENVG-B system does not
overlay the first and second video source image,” so “there is no infringement . . . and summary
judgment should be entered in L3’s favor.” L3 MSJ NI at 33.

156

The preliminary issues affecting the infringement analysis are not in dispute. The term
“overlay” has already been construed by the Court as having its plain and ordinary meaning. See
Markman Op., 154 Fed. Cl. at 624–27. Furthermore, the parties seemingly agree on how L3’s
ENVG-B system performs the alleged overlay. See, e.g., L3 MSJ NI – SAIC Resp. at 28; L3 MSJ
NI – L3 Reply at 8–9, 12.
See Villasenor Appendix C ¶ 13

; Bajaj Op. Rpt. ¶¶ 191–96.
See Villasenor Appendix C ¶ 16
; Bajaj Op. Rpt. ¶ 196

Villasenor Appendix C ¶ 16
; Bajaj Op. Rpt. ¶ 196; id. ¶ 206

The only dispute is whether a POSITA would understand L3’s ENVG-B system to
“overlay”
That question, however, is a quintessential fact question that must be resolved at trial, not

157

at the summary judgment stage. “The resolution of some line-drawing problems . . . is properly
left to the trier of fact.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007); see
also PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the
court has defined the claim . . . the task of determining whether the construed claims reads on the
accused product is for the finder of fact.”).
Both parties support their respective arguments with robust and oftentimes compelling
evidence. L3 cites the testimony of its expert, Dr. Villasenor, that “the ENVG-B system does not
‘overlay’ first and a second video source images as required by the asserted claims of the ’230
patent.” Villasenor Appendix C ¶ 61; see also id. ¶ 44

. Dr. Villasenor supports his opinion with a detailed analysis
of the ENVG-B system, the ’230 claim language and specification, technical documents produced
in the case, and other testimony from knowledgeable fact witnesses. See generally id. ¶¶ 38–61.
L3 also cites the testimony of fact witnesses who are intimately familiar with the operation of the
ENVG-B system. Dr. Hombs, a BAE engineer responsible for developing the ENVG-B source
code, testified that
See Hombs Depo. Tr. at 19:5–13, 47:13–48:9; see also Cirillo Depo. Tr. at
62:10–18, 64:14–65:10). L3’s principal engineer for the ENVG-B system, Mr. Coffman, likewise
testified
See Coffman Depo. Tr. at 238:3–239–7. L3 finally cites statements from SAIC
suggesting
, arguably supporting L3’s argument that the ENVG-B system does not

158

L3 MSJ NI at 18–19, 30–32; see Hearing Transcript, dated January 3, 2018 (ECF No.
344-6); SAIC Presentation for Hearing, dated January 3, 2018 (ECF No. 344-7).
SAIC, though, also presents substantial evidence that L3’s ENVG-B system meets the
“overlay” element of claim 1(e). SAIC’s expert, Dr. Bajaj, testified that a POSITA

Bajaj Op. Rpt. ¶ 197.
He further testified that a POSITA

Id. ¶ 198. Like Dr. Villasenor, Dr.
Bajaj’s testimony is supported by a thorough analysis of the ENVG-B system, including reference
to source code, and technical documents describing the ENVG-B system. See generally id.
¶¶ 190–212. SAIC also cites multiple L3 technical documents that describe

See L3 Presentation of ENVG-B Program of Record Software Design Overview, dated October 2,
2019 (ECF No. 361-5)

;

Common User Interface for ENVG-B Program of Record Performance Specification, dated
January 13, 2021 (ECF No. 361-6)

; L3 Documents

L3_010594 and L3_010607, dated April 24, 2020 (ECF No. 361-7)

; L3 ENVG-B Response to Request for Information, dated April 9, 2018 (ECF No.
361-8)
;

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L3 ENVG-B Program of Record Critical Design Review, dated September 19, 2019 (ECF No.
361-9)

L3 also cites documents produced by the United States

that
See Common User Interface for ENVG-B Program of Record, dated February 3, 2020 (ECF No.
361-4)

Cf. Bancorp Servs., L.L.C. v. Hartford Life
Ins. Co., 359 F.3d 1367, 1375–76 (Fed. Cir. 2004) (in context of indefiniteness, observing
“evidence of defendants’ knowledge and use of the term . . . is relevant to show that the term was
in use and had a discernable meaning to at least some persons practicing in the field”).
In summary, both parties agree on the operation of the ENVG-B system—at least with
respect to the “overlay element”—and purport to be faithfully applying the Court’s construction
of “overlay.” Nonetheless, the parties disagree as to how the properly construed claim term maps
onto L3’s ENVG-B system. The parties’ respective arguments are supported by ample evidence
in the record.

Most importantly, SAIC has presented substantial evidence rebutting L3’s

contention that L3’s ENVG-B system does not meet the “overlay” element of claim 1(e). “[A]
trial court cannot reach a conclusive finding of noninfringement if the record shows some evidence
supporting a finding of noninfringement and some evidence to the contrary.” AEF Indus., Inc. v.
Cardinal IG Co., Inc., 375 F.3d 1367, 1371 (Fed. Cir. 2004). Accordingly, “the record evidence
demonstrates that ‘there is sufficient evidence favoring the nonmoving party for a jury to return a

160

verdict for that party’ . . . and that summary judgment [is] therefore inappropriate.” 92 U.S. Water
Servs., Inc. v. Novozymes A/S, 843 F.3d 1345, 1351–52 (Fed. Cir. 2016) (quoting Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 249 (1986)).
2.

Genuine Disputes of Material Fact Exist Regarding the
“Identify” Limitation of Claim 1(c)

L3 next argues its ENVG-B system does not infringe the “identify” limitation of claim
1(c). See L3 MSJ NI at 33–40. According to L3, claim limitation 1(c) requires the ENVG-B
system to “use . . . motion data to identify portions of the two images that potentially overlap.” Id.
at 33–34. Then, claim limitation 1(d) requires the ENVG-B system to “use . . . image data to
evaluate” the identification performed in step 1(c). Id. at 34. L3 observes that this Court construed
the term “based on a comparison of data from the first and second video source images” in claim
limitation 1(d) to mean “based on a comparison of image data (e.g., content and contrast) from
the first and second video source images.” Markman Op., 154 Fed. Cl. at 627, 639 (emphasis
added). Accordingly, L3 contends “the ’230 patent requires motion data for the ‘identify’ step
[claim limitation 1(c)]” and then requires the identification performed in the “identify” step “be
separately checked via image data in the ‘evaluate’ step [claim limitation 1(d)].” L3 MSJ NI at
36.
With those principles in place, L3 argues the ENVG-B does not satisfy the “identify” step
of claim 1(c) because
L3 MSJ NI at 36–40. L3 asserts that

92

This Court denies summary judgment only with respect to SAIC’s argument that
meets the “overlay” element of claim 1(e). See L3 MSJ NI –
SAIC Resp. at 20–28; Bajaj Op. Rpt. ¶¶ 190–209. This Court does not—because it need not—
express an opinion or otherwise rule on SAIC’s alleged “optical overlay” theory. See L3 MSJ NI
– SAIC Resp. at 28–30; L3 MSJ NI – L3 Reply at 13–15.
161

Id. at 36. Put differently,

Id. at 37. It is only

Id. L3
cites the testimony of Dr. Hombs, Mr. Coffman, and Mr. Cirillo, all of whom stated the ENVG-B

See id. at 37–39. In particular, Dr. Hombs, Mr. Coffman,
and Mr. Cirillo
Id. at 39; see also Hombs Depo. Tr. at 72:20–73:3
; Coffman
Depo. Tr. at 232:15–21
Dr. Hombs also testified that if

L3 MSJ NI at 38; Hombs Depo. Tr. at 73:16–74:3.
In summary, L3 argues the ENVG-B system does not use motion data for the “identify” step
because

See L3 MSJ NI at 36–40.

Id. at 33.

162

SAIC claims L3’s emphasis on the

has no

bearing on the infringement analysis. According to SAIC, L3 focuses on “unclaimed features that
are not relevant to infringement.” L3 MSJ NI – SAIC Resp. at 30. SAIC contends the L3 Asserted
Claims are “comprising” claims that “are infringed by instrumentalities that include each claim
element and that may further include additional unclaimed features.” Id. at 32. SAIC further
argues L3 failed “to rebut SAIC’s infringement evidence” and, therefore, “there exist genuine
disputes of material fact as to L3’s infringement of the ‘identify’ and ‘evaluate’ elements.” Id.
SAIC is correct that L3’s focus on
is essentially a red herring. “The transitional term ‘comprising’ . . . is
inclusive or open-ended and does not exclude additional, unrecited elements or method steps.”
Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327–28 (Fed. Cir. 1999) (internal
citations omitted); see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 811 (Fed. Cir.
1999) (explaining “the signal ‘comprising’ . . . is generally understood to signify that the claims
do not exclude the presence in the accused apparatus or method of factors in addition to those
explicitly cited”); In re Affinity Labs of Texas, LLC, 856 F.3d 902, 907 (Fed. Cir. 2017) (noting
the transition “comprising” indicates “that the claimed method is open-ended and allows for
additional steps”); CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007)
(affirming the “established” understanding that the “comprising” transition “does not of itself
exclude the possible presence of additional elements or steps”).
Independent claim 1 of the ’230 patent recites “[a] system, comprising . . . a controller . . .
wherein the controller is configured to” “receive motion data indicative of motion of the first and
second video sources” and then perform the “identify” step “based on the received motion data.”
’230 patent at 24:25–51. Claim 1 has a “comprising” transition; therefore, “infringement is not

163

avoided by the presence of elements or steps in addition to those specifically recited in the claim.”
Vivid Techs., 200 F.3d at 811.

Indeed, L3 states that

L3
MSJ NI at 37. If the ENVG-B system
the ENVG-B system
may infringe claim 1. See id. L3’s attention on

is therefore

unavailing.
L3 further argues “the ENVG-B never uses motion data to ‘identify’ a portion of one image
that potentially represents a portion of another.” L3 MSJ NI – L3 Reply at 17. In the next sentence,
though, L3 acknowledges that
Id. The second sentence directly contradicts the first. While L3
attempts to minimize the subsequent use of image and motion data as merely
that characterization is simply L3’s interpretation of how the ENVGB system operates in the context of the L3 Asserted Claims. Id. SAIC has an altogether different
understanding, supported by Dr. Bajaj’s testimony and technical documents describing the ENVGB’s

. See L3 MSJ NI – SAIC Resp. at 15–17
; id.

at 30–36; Bajaj Op. Rpt. ¶¶ 164–76

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L3’s contradictory wordsmithing underscores
the genuine dispute of material fact regarding the “identify” step in claim limitation 1(c).
Indeed, there is sufficient evidence in the record reflecting a genuine dispute of material
fact concerning whether L3’s ENVG-B system infringes the “identify” and “evaluate” steps of
claim 1. Dr. Bajaj opined that the ENVG-B system satisfies the “identify” step of claim limitation
1(c). See Bajaj Op. Rpt. ¶¶ 164–76. Specifically, Dr. Bajaj stated that

Id. ¶ 165.

Id. Dr. Bajaj supports his opinion with
reference to the ENVG-B source code and technical documents that corroborate his understanding
of the ENVG-B’s use of

. See id. ¶¶ 166–75; see also ENVG-III/FWS-I RTA

Documentation Describing Inertial Tracking, Image Correlation, and Joint Tracking, dated June
26, 2016 (ECF No. 361-1) (ENVG-III/FWS-I RTA Documentation) at 3

; id.

. L3’s opposition is a disagreement concerning the
appropriate comparison of the L3 Asserted Claims to the ENVG-B system. See PPG Indus., 156

165

F.3d at 1355 (“[A]fter the court has defined the claim . . . the task of determining whether the
construed claims reads on the accused product is for the finder of fact.”); Pitney Bowes, 182 F.3d
at 1304 (“[T]he determination of whether the properly construed claims read on the accused device
. . . is a question of fact.”). Accordingly, “viewing the alleged facts in the light most favorable to
the non-movant,” there is a genuine dispute of material fact regarding whether L3’s ENVG-B
system infringes claim limitations 1(c) and 1(d). Pitney Bowes, 182 F.3d at 1304. L3 is not entitled
to summary judgment of non-infringement with respect to claim limitations 1(c) and 1(d).
3.

Genuine Disputes of Material Fact Exist Regarding Whether the
ENVG-B System Performs the “Identify,” “Evaluate,” and
“Display” Steps in the ’230 Patent’s Required Order

L3 finally argues that its ENVG-B system does not infringe the L3 Asserted Claims
because it does practice claim limitations 1(c), 1(d), and 1(e) in sequential order on the same pair
of video frames. See L3 MSJ NI at 40–44. Like Microsoft, L3 argues “the same pair of video
source images that were used for the ‘identify’ step of element (c) and the ‘evaluate’ step of
element (d) must in turn be the same pair of video source images that are overlayed pursuant to
element (e).” Id. at 40 (emphasis in original). L3 further contends “[t]he undisputed evidence
shows that the L3 ENVG-B system
Id. at 43. SAIC disagrees and argues that
the ’230 patent does not require the same pair of video source images be “identified,” “evaluated,”
then subsequently “displayed;” but even if that were the case, L3’s motion for summary judgment
of non-infringement “still should be denied because there exists a genuine dispute of material fact
as to whether the ENVG-B system performs this way.” See L3 MSJ NI – SAIC Resp. at 37–45.
As noted, the grammar and logic of claim limitations 1(c), 1(d), and 1(e) dictate that those
limitations must be performed in sequential order on the same set of video source images. See

166

supra Section IV(B)(b)–(c). SAIC is therefore incorrect to argue here that the same pair of video
source images need not be “identified,” “evaluated,” then subsequently “displayed.” However, it
does not necessarily follow that L3 is entitled to summary judgment of non-infringement on that
basis. L3 still maintains “[t]he burden of showing the absence of a genuine issue of material fact.”
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323 (Fed. Cir. 2009) (citing Celotex, 477
U.S. at 322–23). Furthermore, this Court “must afford all reasonable inferences and construe the
evidence in the light most favorable to the non-moving party,” SAIC. Vita-Mix, 581 F.3d at 1323.
Here, after a careful review of the evidence presented by both parties and resolving all reasonable
inferences in favor of SAIC, this Court holds that L3 failed to meet its burden to show an absence
of a genuine dispute that the ENVG-B system does not “identify,” “evaluate,” then subsequently
display the same pair of video source images, as required by claim 1.
L3’s primary argument that its ENVG-B system does not sequentially practice claims 1(c),
1(d), and 1(e) depends on
See L3 MSJ NI at 43–44. L3 contends there are

Id. In addition, L3 claims
Id. at 44.

Id.
Put differently, L3 contends the ’230 patent requires that motion data from image set A and image
data from image set A are used to align and immediately display image set A. L3 alleges, however,

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However, there exists a genuine dispute of material fact concerning L3’s contention that

L3 MSJ NI at 43–44. The evidence L3
submits does not conclusively establish that the ENVG-B does not infringe claim 1. L3 first relies
on the testimony of Mr. Cirillo, “the BAE engineer responsible for drafting much of the RTArelated source code for the ENVG-B system.” Id. at 43. Mr. Cirillo testified that

Cirillo Depo. Tr. at 86:21–87:3. L3 uses Mr. Cirillo’s testimony to support its
contention that the
L3 MSJ NI at 43. However, Mr. Cirillo’s testimony is equivocal—

—and too tentative to eliminate a genuine dispute
of fact. Cirillo Depo. Tr. at 86:21–87:3 (emphasis added). Furthermore, Mr. Cirillo later appears
to dispute his prior testimony, agreeing that
Id.
at 87:15–21.
L3 also cites a declaration from Mr. Coffman, “the L3 engineer who led the development
of the ENVG-B system.” L3 MSJ NI at 43–44. Mr. Coffman stated that

168

Coffman Decl. ¶ 4. However,
just because

Indeed, the tortoise and the hare both finished the same race and stood at the same podium.
Mr. Coffman also stated
Coffman Decl. ¶ 5. Mr. Coffman concludes that

Id. ¶ 6. However, Mr. Coffman does not cite any technical documents or source code to bolster
this otherwise conclusory statement. Furthermore, Mr. Coffman expressly states

seemingly
contradicting L3’s argument. Id. While Mr. Coffman’s testimony may prove persuasive at trial,
it is insufficient to establish the absence of a genuine dispute of material fact at this point. See
Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) (“[I]n
connection with motions for summary judgment, a conclusory statement on the ultimate issue does
not create a genuine issue of fact.”) (emphasis in original).
L3’s expert, Dr. Villasenor, also opined that

Villasenor Appendix C ¶ 64; see generally id. ¶¶ 62–
67. However, Dr. Villasenor based his conclusions solely on conversations with Mr. Cirillo and
Mr. Coffman. See id. ¶¶ 62–67. Dr. Villasenor did not provide any analysis of his own, such as

169

by referencing the actual ENVG-B system or its source code. See id.; see also Garmin Int’l, Inc.
v. LoganTree, LP, 825 F. App’x 894, 898 n.5 (Fed. Cir. 2020) (affirming finding that “expert
merely parroted attorney argument without any supporting evidence or reasoning” and that “the
expert’s conclusory opinion was less than persuasive”). Dr. Villasenor’s repetition of already
conclusory arguments is of little evidentiary value to L3’s position.
L3 finally claims SAIC’s expert, Dr. Bajaj, “also recognizes the ENVG-B system operates”
in this allegedly non-infringing way, specifically citing Dr. Bajaj’s deposition testimony. L3 MSJ
NI at 43. However, L3 mischaracterizes Dr. Bajaj’s testimony. Dr. Bajaj clarified

Bajaj Depo. Tr. at 148:3–6. As discussed above, the mere fact that

In his
deposition, Dr. Bajaj also explained a

Bajaj Op. Rpt. ¶ 186; see Bajaj Depo. Tr. at 149:3–150:10. Dr. Bajaj explained that

Bajaj
Depo. Tr. at 150:1–7. This statement does not support L3’s ordering argument. If anything, it
supports SAIC’s contention that

170

The sparse evidence L3 does offer to support its non-infringement argument is also
disputed by evidence put forth by SAIC, which reflects a genuine dispute concerning whether the
ENVG-B performs claim limitations 1(c), 1(d), and 1(e) in sequential order. For example, Dr.
Bajaj’s expert report includes statements suggesting
In his analysis of the “evaluation” step of claim limitation 1(d),
Dr. Bajaj states

Bajaj Am. Op. Rpt. ¶ 177.

Id. ¶ 178.
Id.
Elsewhere in Dr. Bajaj’s report, he offers testimony that
See, e.g., id. ¶ 179
; id. ¶ 182

; id. ¶ 185

; id. ¶ 186

; see generally id. ¶¶ 190–209.

171

Dr. Bajaj also cites L3 technical documents that further suggest the ENVG-B system

ENVG-III/FWS-I RTA Documentation at 3. This
statement suggests the ENVG-B

This evidence supports SAIC’s claim that “there exists
a genuine dispute of material fact as to whether the ENVG-B system performs” as L3 urges. L3
MSJ NI – SAIC Resp. at 44.
As there is a genuine dispute of material fact, summary judgment is not appropriate.
However, this is not to say SAIC’s evidence will be sufficient for SAIC to ultimately meet its
burden to prove infringement at trial by a preponderance of the evidence. See Egyptian Goddess,
Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (“[T]he patentee bears the ultimate
burden of proof to demonstrate infringement by a preponderance of the evidence.”). As noted
above, Dr. Bajaj has provided inconsistent testimony concerning whether claim limitations 1(c),
1(d), and 1(e) must be performed in sequential order for a pair of video source images. Compare
Bajaj Reb. Rpt. ¶ 126 (opining that the same pair of frames evaluated in claim limitation 1(d) must
be subsequently displayed pursuant to claim limitation 1(e)) with Bajaj Depo. Tr. at 87:24–88:6
(opining there is “no total ordering of all the steps”). Dr. Bajaj’s apparent inconsistency, however,
does not necessarily mean L3’s ENVG-B system does not infringe claim 1, nor does it mean SAIC
cannot, as a matter of fact or law, prove infringement at trial. That will depend on the evidence

172

and witnesses the parties present at trial, where the Court can properly make credibility
determinations and weigh the evidence accordingly. See Anderson, 477 U.S. at 255 (noting
“[c]redibility determinations, the weighing of the evidence, and the drawing of legitimate
references from the facts” should be left to the finder of fact); Metro. Life Ins. Co. v. Bancorp
Servs., LLC, 527 F.3d 1330, 1339 (Fed. Cir. 2008) (“Resolving . . . credibility disputes . . . is not
appropriate on summary judgment.”); Crown Packaging Tech., Inc. v. Ball Metal Beverage
Container Corp., 635 F.3d 1373, 1384 (Fed. Cir. 2011) (“When there is a material dispute as to
the credibility and weight that should be afforded to conflicting expert reports, summary judgment
is usually inappropriate.”). Instead, the evidence SAIC puts forth here is sufficient to create a
genuine dispute of material fact and stave off L3’s motion for summary judgment of noninfringement.
In summary, “the record does not conclusively describe” how L3’s ENVG-B system
operates with respect to claim limitations 1(c), 1(d), and 1(e). Hilgraeve Corp. v. McAfee Ass.,
Inc., 224 F.3d 1349, 1353 (Fed. Cir. 2000). Both parties provided evidence that support their
respective arguments. As such, there is a genuine dispute of material fact with respect to how, and
in what order, the ENVG-B system performs the “identify,” “evaluate,” and “display” claim
limitations. See id. (vacating grant of summary judgment of non-infringement because “the
determination of whether either [party’s] description (or neither) is correct requires a factual
determination” that could not be resolved “on this record”). It is not “the task of the district court
[] to attempt to interpret confusing or general testimony to determine whether a [claim] has been
made out, particularly at the summary judgment stage.” Globetrotter Software, Inc. v. Elan Comp.
Grp., Inc., 362 F.3d 1367, 1378 (Fed. Cir. 2004) (quoting Schumer v. Lab Comp. Sys., Inc., 308
F.3d 1304, 1316 (Fed. Cir. 2002)).

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c.

Conclusion – L3’s Motion for Summary Judgment of NonInfringement

For the reasons explained, genuine disputes of material fact exist with respect to the three
non-infringement arguments raised by L3. Summary judgment is therefore improper, and L3’s
Motion for Summary Judgment of Non-Infringement (ECF No. 341) is DENIED.
E.

SAIC’s Motion for Partial Summary Judgment of Infringement by the
Government

SAIC moves for partial summary judgment that the accused DRS ENVG-III and Elbit
ENVG-B systems infringe certain asserted claims of the ’230 patent. For the reasons explained
below, summary judgment regarding the DRS ENVG-III system and Elbit ENVG-B system is not
appropriate, for at least two reasons. First, there is a genuine dispute of material fact whether the
DRS and Elbit systems practice the “overlay” element of claim limitation 1(e). Second, there is a
genuine dispute of material fact whether the DRS and Elbit systems practice claim limitations 1(c),
1(d), and 1(e) in sequential order on the same pair of frames, as required by claim 1. Accordingly,
SAIC’s Motion for Partial Summary Judgment of Infringement by the Government (ECF No. 340)
is DENIED.
a.

Background – SAIC’s Motion for Partial Summary Judgment of
Infringement by the Government

SAIC asserted claims 1, 12, 18, 29, 30, and 39 of the ’230 patent against Elbit’s ENVG-B
system.

See Bajaj Op. Rpt. ¶ 21.

According to Dr. Bajaj,

Id. n.1. Accordingly,
which this Court discussed at length above.
See supra Section IV(D)(a); Bajaj Op. Rpt. ¶ 422.

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SAIC also asserted claims 1, 18, 29, 30, and 39 of the ’230 patent against DRS’s ENVGIII system. Bajaj Op. Rpt. ¶ 21. The ENVG-III system is functionally similar to the ENVG-B
system, particularly with respect to the asserted claims. See id. ¶¶ 108–13 (describing functionality
of “ENVG-based systems” generally). Like the ENVG-B system, the ENVG-III system is
comprised of a goggle assembly, an RTA battery pack, and a thermal weapon sight, or FWS-I. See
id. ¶ 111. The ENVG-III system also supports spatially aligned RTA capability. Id. ¶¶ 108–11.
The main difference is the ENVG-III system has a monocular design, while the ENVG-B system
has a binocular design. See SAIC MSJ Inf. at 15.
Another third party, Equinox Corporation, developed and provided the source code
installed in Elbit’s ENVG-B system and DRS’s ENVG-III system. See SAIC MSJ Inf. – Def.
Resp. at 8 (“Both [] systems utilize source code developed by Equinox Corporation.”); SAIC MSJ
Inf. at 13 n.2 (“Defendants . . . disclosed Equinox as having the source code that the accused Elbit
ENVG-B and DRS ENVG-III systems run in connection with the accused spatially aligned RTA
functionality.”). The parties agree that despite the ENVG-B’s and ENVG-III’s different physical
designs—binocular versus monocular—“the Equinox source code in Elbit’s ENVG-B systems and
in DRS’s ENVG-III systems operates in materially the same way for each system.” SAIC MSJ
Inf. – Def. Resp. at 8;

Unlike Microsoft and L3, Elbit and DRS did not intervene in this action. See ECF No.
135; supra Section I(A)(a). During fact discovery, SAIC deposed an Elbit representative, Mr.
Mark Oyler, regarding Elbit’s ENVG-B system. See Deposition of Mark Oyler, dated October 7,
2022 (ECF Nos. 340-14, 359-4) (Oyler Depo. Tr.).

175

SAIC also deposed a DRS representative, Mr. Douglas Peysha, regarding DRS’s ENVGIII system. See Deposition of Douglas Peysha, dated October 4, 2022 (ECF Nos. 340-13, 359-3)
(Peysha Depo. Tr.).

SAIC finally deposed an Army representative, Mr. Dean Kissinger, who
testified regarding his understanding of the ENVG-based devices. See SAIC MSJ Inf. – Def. Resp.
at 20–21; Deposition of Dean Kissinger, dated August 5, 2022 (ECF Nos. 359-5, 367-4, 376-3,
384-5) (Kissinger Depo. Tr.).
During expert discovery, SAIC’s expert, Dr. Bajaj, “reviewed and analyzed the Equinox
source code that provides the accused RTA functionality within the DRS ENVG-III and Elbit
ENVG-B systems.” SAIC MSJ Inf. at 19; see Bajaj Op. Rpt. ¶¶ 115, 424. Dr. Bajaj opined, based
on his review of technical documents, deposition transcripts, and Equinox source code, that DRS’s
ENVG-III system and Elbit’s ENVG-B system each infringe the asserted ’230 patent claims. See

176

Bajaj Op. Rpt. ¶¶ 423–24 (summary of opinion regarding Elbit’s ENVG-B); id. ¶¶ 602–03
(summary of opinion regarding DRS’s ENVG-III); see generally id. ¶¶ 422–599 (analysis of Elbit
ENVG-B); id. ¶¶ 600–90. The Government, however, did not proffer any expert testimony
rebutting Dr. Bajaj’s opinions concerning infringement by Elbit’s ENVG-B and DRS’s ENVG-III
systems. SAIC MSJ Inf. at 20. Though Defendants procured testimony from Dr. Villasenor, he
did not offer any opinions relating to Dr. Bajaj’s analysis of Elbit’s ENVG-B or DRS’s ENVG-III
system. See SAIC MSJ Inf. at 13–14; Villasenor Reb. Rpt. ¶¶ 21–23 (summary of opinions
regarding L3 ENVG-B system and Microsoft products).
b.

Discussion – SAIC’s Motion for Partial Summary Judgment of
Infringement by the Government

SAIC argues partial summary judgment of infringement is appropriate because the
Government has not provided any evidence of non-infringement. See SAIC MSJ Inf. at 9–10.
SAIC observes the Government did not offer expert testimony of non-infringement to rebut
SAIC’s expert evidence. Id. SAIC also contends the Government did not identify any fact
evidence of non-infringement for Elbit’s and DRS’s systems. Id. SAIC argues, accordingly, that
“the Government cannot establish that there exists a genuine issue of material fact in support of
non-infringement,” and summary judgment is required. Id. at 10. The Government counters that
“there is substantial evidence, both fact and expert, indicating that [the DRS ENVG-III and Elbit
ENVG-B systems] do not infringe any asserted claim.” SAIC MSJ Inf. – Def. Resp. at 7. The
Government emphasizes a defendant need not obtain expert testimony to defeat an infringement
allegation, particularly where the patentee “bears the burden of proof on infringement.” Id.
For the reasons explained below, summary judgment of infringement by Elbit’s ENVG-B
and DRS’s ENVG-III systems is DENIED.

177

1.

Expert Testimony is Not Required to Rebut Infringement
Allegations

SAIC’s argument for partial summary judgment relies heavily on the Government’s failure
to support its non-infringement arguments with expert testimony. SAIC highlights Dr. Bajaj’s
infringement analysis, in which he “considered Elbit’s and DRS’s admissions, analyzed the
Government’s and its contractors’ documents, [and] inspected the Equinox source code that runs
on the Elbit ENVG-B and DRS ENVG-III systems.” SAIC MSJ Inf. at 36.

In contrast,

Defendants’ technical expert, Dr. Villasenor, did not analyze Elbit’s or DRS’s systems and did not
rebut Dr. Bajaj’s testimony regarding those accused systems. Id. Therefore, SAIC contends,
“having failed to conduct expert analysis or offer expert testimony regarding the DRS and Elbit
systems, the Government cannot establish a material dispute of fact to rebut SAIC’s showing [of]
infringement by a preponderance of the evidence.” Id. at 36–37. The Government counters that
“there is no requirement that a party accused of patent infringement must incur the expense of an
expert witness to defeat such accusations.” SAIC MSJ Inf. – Def. Resp. at 24.
SAIC’s emphasis on the Government’s failure to provide expert testimony is misplaced.
An accused infringer is not required to use expert testimony to disprove an infringement allegation.
An accused infringer may, instead, rely on the patentee failing to meet its “ultimate burden of proof
to demonstrate infringement by a preponderance of the evidence.” Egyptian Goddess, 543 F.3d at
679. Naturally, “the burden remains with the patentee to prove infringement, not on the defendant
to disprove it.” Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095 (Fed. Cir. 2008).
Therefore, summary judgment of infringement is not automatically required if an accused infringer
does not proffer rebuttal expert testimony. See Moleculon Rsch. Corp. v. CBS, Inc., 793 F.2d 1261,
1270 (Fed. Cir. 1986) (“We have never required a party to proffer expert testimony . . . on
application of claim language to accused devices.”), abrogated on other grounds by BASF Corp.
178

v. SNF Holding Co., 955 F.3d 958 (Fed. Cir. 2020) (emphasis in original); Ironburg Inventions
Ltd. v. Valve Corp., 64 F.4th 1274, 1292 (Fed. Cir. 2023) (agreeing with district court that “expert
testimony was not necessary” in part because “the technology at issue was easily understandable”).
SAIC argues when the relevant technology is “complex,” expert testimony is required “to
prove or rebut infringement.” SAIC MSJ Inf. at 37; see Proveris Sci. Corp. v. Innovasystems, Inc.,
536 F.3d 1256, 1267–68 (Fed. Cir. 2008) (holding the relevant technology was “sufficiently
complex to fall beyond the grasp of an ordinary layperson,” so district court did not err “in
requiring [defendant] to present expert testimony . . . to establish invalidity”). SAIC’s argument,
while directionally correct, overstates the extent to which expert testimony is required in cases
dealing with complex technology. The cases requiring expert testimony typically involve the party
with the burden of proof being unable to meet its burden without expert testimony.

See

Innovasystems, 536 F.3d at 1267–68 (holding defendant, with burden of proving invalidity, was
required “to present expert testimony in order to establish invalidity”); AquaTex Indus., Inc. v.
Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (affirming summary judgment of noninfringement because plaintiff, with burden of proving infringement, “provided no particularized
testimony from an expert or person skilled in the art” to support its infringement theory); Centricut,
LLC v. Esab Grp., Inc., 390 F.3d 1361, 1370 (Fed. Cir. 2004) (“Suffice it to say that in a case
involving complex technology, where the accused infringer offers expert testimony negating
infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from
those who are admittedly not expert in the field.”). However, even the Federal Circuit in Centricut
stopped short of requiring expert testimony in cases involving complex technology. Centricut,
390 F.3d at 1370 (“We do not state a per se rule that expert testimony is required to prove

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infringement when the art is complex.”). In short, SAIC overstates the importance of expert
testimony by a party that does not shoulder the burden of proof.
The few cases SAIC does cite that involve granting summary judgment of patent
infringement are markedly different on their facts from the present case. SAIC cites Edge Systems
LLC v. Aguila, where the Federal Circuit affirmed summary judgment of infringement. 708 F.
App’x 998, 1005 (Fed. Cir. 2017). However, the accused infringer in Edge Systems “present[ed]
no evidence to support his non-infringement argument.” Id.; see Edge Sys. LLC v. Aguila, 186 F.
Supp. 3d 1330, 1355–56 (S.D. Fla. 2016) (stating patentee’s expert’s testimony was “essentially
uncontradicted”). Here, in contrast, and as discussed infra, the Government presents evidentiary
support for its non-infringement arguments. See infra Section IV(E)(b)(2)–(3). SAIC also cites
Allergan, Inc. v. Barr Laboratories, Inc., a nonbinding case from the District of Delaware. 808 F.
Supp. 2d 715, 727 (D. Del. 2011). Allergan is immediately distinguishable because the defendants
“did not dispute that their [] products literally infringe[d]” and “concede[d] infringement.” 93 Id.
The Government here “genuinely disputes SAIC’s infringement allegations.” SAIC MSJ Inf. –
Def. Resp. at 27. Another nonbinding case, Crane Security Technologies, Inc. v. Rolling Optics
AB, similarly involved a defendant that “provided no evidence of non-infringement” and is
therefore not relevant to this case. No. 14-12428-LTS, 2018 WL 575697, at *10 (D. Mass. Jan.
26, 2018). And a third nonbinding, not analogous case, Audionics System, Inc. v. AAMP of Florida,

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The district court’s infringement analysis in Allergan is noteworthy. Even though the defendants
conceded infringement, the district court still outlined the plaintiff’s infringement evidence
“[n]otwithstanding defendant’s concessions, insofar as Allergan bears the burden of proof on
infringement.” Allergan, 808 F. Supp. 3d at 727. Even if the accused infringer does not present a
meaningful defense, the patentee’s burden to prove infringement by a preponderance of the
evidence precludes a court from simply rubber-stamping the patentee’s infringement theory
without at least high-level scrutiny.
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Inc., likewise involved a defendant that “adduced no evidence” regarding non-infringement. No.
12-10763-MMM, 2015 WL 11182054, at *12–*17 (C.D. Cal. July 10, 2015).
SAIC has not cited any authority to support the argument that summary judgment of
infringement is required where the accused infringer disputes the allegation and offers evidence in
support of non-infringement, but simply fails to proffer expert testimony. SAIC also misstates the
law concerning the necessity of expert testimony, particularly for the party that does not bear the
burden of proof. SAIC is not entitled to summary judgment of infringement simply because the
Government did not offer rebuttal expert testimony.
Notwithstanding that holding, however, this Court must still determine if the evidence the
Government does provide is sufficient to create a genuine dispute of material fact.
2.

Genuine Disputes of Material Fact Exist Regarding the
“Overlay” Element of Claim 1(e)

Partial summary judgment is not appropriate because there exists a genuine dispute of
material fact whether Elbit’s ENVG-B and DRS’s ENVG-III systems infringe the “overlay”
element of claim limitation 1(e). The Court’s holding is consistent with, and necessitated by, its
decision concerning L3’s motion for summary judgment of non-infringement, discussed above:
whether a POSITA would find that Elbit’s ENVG-B and DRS’s ENVG-III systems perform the
“overlay” element is a quintessential fact question that must be resolved at trial. See PPG Indus.,
156 F.3d at 1355 (“[A]fter the court has defined the claim . . . the task of determining whether the
construed claim reads on the accused product is for the finder of fact.”).
As discussed above, this Court has already construed the term “overlay” to have its plain
and ordinary meaning, e.g., “over and upon.” See Markman Op., 154 Fed. Cl. at 624–27.
Furthermore, similar to L3’s ENVG-B system, the parties more or less agree how Elbit’s ENVGB and DRS’s ENVG-III systems perform the alleged “overlay” element;
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; SAIC MSJ Inf. – Def. Resp. at 13–
21. Dr. Bajaj, relying on technical documents produced by the Government, stated that, with
respect to Elbit’s ENVG-B system,

Bajaj Op. Rpt. ¶ 510; see also id. ¶ 515

Dr. Bajaj further incorporated his opinions regarding Elbit’s
ENVG-B system into his analysis of DRS’s ENVG-III system because the Equinox RTA algorithm
performs in materially the same manner on both systems. Id. ¶¶ 645–46; see id.

Id.; see
Bajaj Op. Rpt. ¶¶ 196, 206 (describing alleged “overlay” function performed by L3’s ENVG-B);
Villasenor Appendix C ¶¶ 16, 44, 51 (same).
The question at summary judgment, then, is whether a reasonable fact finder, drawing all
inferences in the Government’s favor, could conclude that this process does not meet the “overlay”
element of claim limitation 1(e). See V-Formation, 401 F.3d at 1310 (“[A] district court may
determine infringement on summary judgment only ‘when no reasonable jury could find that every
limitation recited in the properly construed claim either is or is not found in the accused device.’”)

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(quoting Gart, 254 F.3d at 1339). This Court holds the answer is yes; there is sufficient evidence
from which a reasonable fact finder could conclude Elbit’s ENVG-B and DRS’s ENVG-III
systems do not infringe the “overlay” element.
The Government has provided enough evidence to create a genuine dispute whether Elbit’s
ENVG-B and DRS’s ENVG-III systems practice the “overlay” element. Mr. Peysha, a DRS
representative with personal knowledge of DRS’s ENVG-III system,

A representative from Elbit, Mr. Oyler, similarly testified

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The Government bolsters its argument with testimony from Mr.
Kissinger, an Army representative, who stated

This evidence produced by the Government—testimony from Mr. Peysha, Mr. Oyler, and
Mr. Kissinger, as well as Army technical specifications—is sufficient to create a genuine dispute
of material fact whether Elbit’s ENVG-B and DRS’s ENVG-III systems practice the “overlay”
element. The cited evidence supports the Government’s theory that the ENVG systems perform a
“replacement” operation, which a person of ordinary skill in the art would understand is distinct
from an “overlay” operation. See also SAIC MSJ Inf. – Def. Resp. at 16 (noting SAIC “has
advanced several arguments making clear that ‘overlay’ and ‘replace’ are different processes”).

To the extent this testimony is inconsistent with technical documents and
Equinox source code, as SAIC suggests, such inconsistency is a clear dispute of material fact that
cannot be resolved at summary judgment. See AEF Indus., 375 F.3d at 1371 (summary judgment

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improper “if the record shows some evidence supporting a finding of [infringement] and some
evidence to the contrary”). SAIC contends technical documents from the Government and other
defendants

SAIC also asserts the testimony of Mr. Peysha, Mr. Oyler, and Mr. Kissinger cannot
establish a genuine dispute of material fact because
SAIC MSJ Inf. – SAIC Reply at 10–11. However,
each fact witness has personal knowledge of Elbit’s ENVG-B and DRS’s ENVG-III systems.
SAIC apparently does not dispute this; if it did, it could have moved to exclude the testimony as
inadmissible. Yet SAIC did not do so.

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SAIC’s concerns regarding the Equinox source code are unavailing.
SAIC also contends the Government

SAIC MSJ Inf. – SAIC Reply at 12–13.
However, SAIC is not entitled to summary judgment because there is a genuine dispute whether
the alleged

theory infringes the “overlay” element of claim limitation 1(e). For

example, claim limitation 1(e) requires that the second video source image portion “overlays a
corresponding region of the first video source image portion.” ’230 patent at 24:45–49. Dr. Bajaj
appears to argue, under his

theory, that
Bajaj Op.

Rpt. ¶ 519. However, Dr. Bajaj elsewhere identifies the “first video source” as

It is not clear

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how Dr. Bajaj’s

theory is consistent with his “digital overlay” theory, nor is it

even clear what his precise

theory is. In any event, it is not “the task of the

district court [] to attempt to interpret confusing or general testimony to determine whether a
[claim] has been made out, particularly at the summary judgment stage.” Globetrotter Software,
362 F.3d at 1378 (quoting Schumer, 308 F.3d at 1316). Suffice it to say, SAIC has not shown that
no reasonable fact finder could determine that SAIC failed to prove infringement by a
preponderance of the evidence based on its

theory.

Accordingly, there exists a genuine dispute whether Elbit’s ENVG-B and DRS’s ENVGIII systems perform the “overlay” element of claim limitation 1(e). The Government presented
sufficient evidence to rebut SAIC’s evidence, at least at the summary judgment stage and drawing
all reasonable inferences in the Government’s favor. As a genuine dispute of material fact exists,
a reasonable fact finder could find for the Government regarding the “overlay” element, and
summary judgment is not appropriate on this basis.
3.

Genuine Disputes of Material Fact Exist Regarding Whether
Elbit’s ENVG-B and DRS’s ENVG-III Devices Perform the
“Identify,” “Evaluate,” and “Display” Steps in the ’230 Patent’s
Required Order

In addition, partial summary judgment is not appropriate because there exists a genuine
dispute of material fact whether Elbit’s ENVG-B and DRS’s ENVG-III systems perform claim
limitations 1(c), 1(d), and 1(e) in sequential order on a particular frame, as required by claim 1.
As discussed at length above, grammar, text, and logic require that claim limitations 1(c),
1(d), and 1(e) must be practiced in sequential order on a particular pair of frames. The Government
contends “SAIC does not allege that the Equinox source code performs the three steps of the
asserted claims in sequential order on the same pair of images.” SAIC MSJ Inf. – Def. Resp. at
23. As the Government—and the other Defendants—observe, Dr. Bajaj has provided inconsistent
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testimony on whether claim limitations 1(c), 1(d), and 1(e) require an order. See Bajaj Reb. Rpt.
¶ 126
; Bajaj Depo. Tr. at 87:24–88:6
; SAIC MSJ Inf. – Def. Resp. at 22–24. For purposes of this motion,
SAIC disputes that the claims require an order but contends that even if an order is required,

SAIC is not entitled to partial summary judgment. “When a patentee with the burden of
proof seeks summary judgment of infringement, it must make a prima facie showing of
infringement as to each accused device before the burden shifts to the accused infringer to offer
contrary evidence.” L & W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006). SAIC
has not carried its initial burden to establish infringement by a preponderance of the evidence, at
least at this stage and on this record. Dr. Bajaj’s inconsistent testimony regarding the order of
claim limitations 1(c), 1(d), and 1(e) creates a genuine dispute whether Elbit’s ENVG-B and
DRS’s ENVG-III systems infringe claim 1. Nowhere in Dr. Bajaj’s report does he definitively
opine that Elbit’s ENVG-B or DRS’s ENVG-III practice claim limitations 1(c), 1(d), and 1(e) in
sequential order on the same pair of frames. See generally Bajaj Op. Rpt. ¶¶ 422–690. SAIC’s
primary evidence of infringement by Elbit’s ENVG-B and DRS’s ENVG-III systems, Dr. Bajaj’s
testimony, does not, on its face, embrace the proper ordering of claim limitations 1(c), 1(d), and
1(e). Cf. MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1378 n.1 (Fed. Cir. 2007) (at summary
judgment stage, affording expert testimony little weight because testimony conflicted with proper
interpretation of the claim). Accordingly, when resolving all inferences in the Government’s
favor, a reasonable fact finder could find that Dr. Bajaj, and therefore SAIC, has not shown by a

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preponderance of the evidence that Elbit’s and DRS’s accused systems practice claim limitations
1(c), 1(d), and 1(e) in sequential order on the same pair of frames. See V-Formation, 401 F.3d at
1310.
To be sure, Dr. Bajaj’s report provides disclosures that arguably support infringement of
claim limitations 1(c), 1(d), and 1(e).

Indeed, that is why this Court denied L3’s motion
for summary judgment of non-infringement with respect to this order-of-the-limitations argument:
there was a genuine dispute of material fact concerning L3’s similar ENVG-B system and whether
it practiced claim 1 in the required order. See supra Section IV(D)(b)(3). However, SAIC’s
motion for summary judgment of infringement reflects the reciprocal situation. Despite Dr. Bajaj’s
opinions, there is a genuine dispute of material fact concerning Elbit’s and DRS’s ENVG systems
and whether they practice claim 1 in the required order.
Accordingly, there exists a genuine dispute whether Elbit’s ENVG-B and DRS’s ENVGIII systems infringe claim limitations 1(c), 1(d), and 1(e). SAIC’s evidence is insufficient to
support summary judgment as a matter of law. As a reasonable fact finder could find for the

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Argument, the parties indicated they may be amenable to a stipulation concerning the Desert’s
Edge prior art. See OA Tr. at 223:3–231:1. The Court therefore directed the parties to file a Notice
“related to . . . the Desert’s Edge prior art status.” Order, dated June 23, 2023 (ECF No. 397). The
parties thereafter jointly stipulated that “the Desert’s Edge references . . . will not be argued to
qualify as prior art under any section of 35 U.S.C. § 102 in connection with these proceedings, and
the references will not be relied upon as anticipatory or as part of an obviousness combination of
references.” Joint Notice and Stipulation (ECF No. 398) at 1–2. 95 The parties’ stipulation resolves
the Desert’s Edge prior art status; therefore, SAIC’s Motion for Summary Judgment Regarding
the Desert’s Edge Prior Art Status (ECF No. 340) is DENIED AS MOOT.
V.

Conclusion
For the reasons stated above, this Court orders the following disposition of the parties’

motions. Plaintiff SAIC’s Motion to Strike Untimely Non-Infringing Alternatives and NonInfringement Theories (ECF No. 352) is DENIED in part, solely as it pertains to Microsoft’s noninfringement theory. 96 Defendants’ Joint Motion to Strike the Declaration of SAIC's Infringement
Expert, Dr. Bajaj, Expressing New Infringement Opinions (ECF No. 377) is GRANTED, and the
Clerk of Court is DIRECTED to STRIKE from the record the Declaration of Chandrajit Bajaj,
dated March 29, 2023 (ECF No. 362-3). Intervenor-Defendant Microsoft Corporation’s Motion
for Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 339) is DENIED.

95

The Court understands the parties’ stipulation does not affect “whether any Desert’s Edge
reference may be used for other purposes,” including where the Desert’s Edge references may be
used to “evidence the state of the art and the understandings of persons of skill in the art prior to,
or around, the time of the alleged invention of the ’230 Patent.” Joint Notice and Stipulation (ECF
No. 398) at 2; SAIC MSJ Inf. – Def. Resp. at 34.
96

As noted, on December 14, 2023, this Court ruled on the remaining part of Plaintiff SAIC’s
Motion to Strike Untimely Non-Infringing Alternatives and Non-Infringement Theories (ECF No.
352). See ECF Nos. 415 (sealed), 419 (public); supra n.14.
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Defendant the United States and Third-Party Defendant L3 Technologies, Inc.’s Joint Motion for
Summary Judgment of Invalidity Based on Indefiniteness (ECF No. 342) is DENIED. IntervenorDefendant Microsoft Corporation’s Motion for Summary Judgment of Non-Infringement (ECF
No. 343) is GRANTED. Third-Party Defendant L3 Technologies, Inc.’s Motion for Summary
Judgment of Non-Infringement (ECF No. 341) is DENIED. Plaintiff SAIC’s Motion for Partial
Summary Judgment of Infringement by the Government (ECF No. 340) is DENIED. Plaintiff
SAIC’s Motion for Summary Judgment regarding the Desert's Edge Prior Art Status (ECF No.
340) is DENIED as MOOT.
The parties are directed to CONFER and FILE a Notice within 14 days of this
Memorandum and Order, attaching a proposed public version of this Sealed Memorandum and
Order, with any competition-sensitive or otherwise protected information redacted.

IT IS SO ORDERED.

Eleni M. Roumel
ELENI M. ROUMEL
Judge

Dated: February 14, 2024
Washington, D.C.

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