Infernal Technology LLC et al v. Activision Blizzard Inc

Filing 105

Claim Construction Memorandum Opinion and Order. (Ordered by Chief Judge Barbara M. G. Lynn on 9/6/2019) (rekc)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
INFERNAL TECHNOLOGY, LLC AND
TERMINAL REALITY, INC.,
Plaintiffs,
Case No. 3:18-cv-1397-M

v.
ACTIVISION BLIZZARD INC.,
Defendant.

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
This Order addresses the claim-construction disputes jointly presented by the parties in
Infernal Technology, LLC et al. v. Microsoft Corp., No. 2:18-cv-00144-JRG (E.D. Tex.) (the
“Microsoft Case”), Infernal Technology, LLC et al. v. Crytek GmbH, No. 2:18-cv-00284-JRG
(E.D. Tex.) (the “Crytek Case”), and Infernal Technology, LLC et al. v. Activision Blizzard Inc.,
No. 3:18-cv-01397-M (N.D. Tex.) (the “Activision Case”). The parties submitted the same
claim-construction briefing in all cases. Infernal Technology, LLC and Terminal Reality, Inc.
(collectively, “Plaintiffs”) submitted opening and responsive briefs (Microsoft Case, Dkt. No. 101
and Dkt. No. 107; Crytek Case, Dkt. No. 45 and Dkt. No. 47; Activision Case, Dkt. No. 93 and
Dkt. No. 96). Microsoft Corp., Crytek GmbH, and Activision Blizzard Inc. (collectively
“Defendants”) submitted opening and responsive briefs (Microsoft Case, Dkt. No. 99 and Dkt. No.
106; Crytek Case, Dkt. No. 43 and Dkt. No. 46; Activision Case, Dkt. No. 90 and Dkt. No. 95).
The U.S. District Courts for the Northern District of Texas and the Eastern District of Texas held
a concurrent claim-construction hearing in these proceedings on August 16, 2019. Having
considered the arguments and evidence presented by the parties at the hearing and in their briefing,
the Court issues this Order.
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Table of Contents
I.

BACKGROUND ................................................................................................................3

II.

LEGAL PRINCIPLES ......................................................................................................7
A.

Claim Construction..................................................................................................7

B.

Departing from the Ordinary Meaning of a Claim Term ......................................10

III.

AGREED CONSTRUCTIONS ......................................................................................11

IV.

CONSTRUCTION OF DISPUTED TERMS................................................................12
A.
B.

“determine if a modeled point within said scene is illuminated by said
light source”...........................................................................................................17

C.

“providing lighting data associated with a plurality of simulated light
sources arranged to illuminate said scene, said lighting data including light
image data” ............................................................................................................21

D.

“light image data” ..................................................................................................26

E.

“storing at least a portion of said light image data associated with said
point and said light source” and “at least a portion of” .........................................31

F.
V.

The Preambles of Claim 1 of the ’822 Patent and Claims 1 and 11 of the
’488 Patent .............................................................................................................12

“light accumulation buffer” ...................................................................................34

CONCLUSION ................................................................................................................38

2

I.

BACKGROUND
Plaintiffs allege infringement of two U.S. Patents: No. 6,362,822 (the “’822 Patent”) and No.

7,061,488 (the “’488 Patent”) (collectively, the “Asserted Patents”). The application that issued as
the ’488 Patent is a continuation of the application that issued as the ’822 Patent, which was filed
on March 12, 1999. Each of the Asserted Patents is entitled “Lighting and Shadowing Method and
Arrangements for Use in Computer Graphic Simulations.”
The Asserted Patents were construed previously in Infernal Technology, LLC et al. v.
Electronic Arts Inc., No. 2:15-cv-1523-JRG-RSP (E.D. Tex.) (the “EA Case”). The EA Court
issued a claim-construction order on September 27, 2016. 2016 WL 5415429 (the “EA
Construction”). Several of the terms in dispute here were addressed in, or include terms addressed
in, the EA Construction.
Each of the Asserted Patents was also the subject of Inter Partes Review before the U.S. Patent
and Trademark Office in IPR2016-00928 (the “’822 Patent IPR”) and consolidated IPR201600929 and IPR2016-00930 (the “’488 Patent IPR”).1 The Patent Trial and Appeal Board (“PTAB”)
issued decisions instituting review of the Asserted Patents in October 20162 and issued final
written decisions declining to invalidate any claims of the patents in October 2017.3 In the
institution decisions, as relevant here, the PTAB provided a preliminary claim-construction

1

The parties provide select excerpts from various IPR papers as exhibits. The complete papers are
available to the public through the U.S. Patent and Trademark Office’s Patent Trial and Appeal
Board End to End System at https://ptab.uspto.gov/#/login.
2 Electronic Arts et al. v. Terminal Reality, Inc., IPR2016-00928, paper 7, 2016 WL 7093913
(PTAB Oct. 25, 2016) (“’822 Patent IPR Institution”); Electronic Arts et al. v. Terminal Reality,
Inc., IPR2016-00929, paper 7, 2016 WL 7093937 (PTAB Oct. 25, 2016) (“’488 Patent IPR
Institution”).
3 Electronic Arts et al. v. Terminal Reality, Inc., IPR2016-00928, paper 48, 2017 WL 4805200
(PTAB Oct. 23, 2017) (“’822 Patent IPR Final”); Electronic Arts et al. v. Terminal Reality, Inc.,
IPR2016-00929, paper 50, 2017 WL 4764807 (PTAB Oct. 19, 2017) (“’488 Patent IPR Final”).
3

analysis of “light accumulation buffer.” ’822 Patent IPR Institution, slip op. at 11–15; ’488 Patent
IPR Institution, slip op. at 12–15.
In general, the Asserted Patents are directed to technology for handling lighting and
shadowing in computer graphics. The technology can be generally understood with reference to
Figures 2, 3, and 4 of the ’822 Patent.4 Figure 2, reproduced here, depicts a simulated threedimensional (“3D”) scene (10). The

’822 Patent Figure 2

scene includes at least one 3D object
(12) that is represented by spatial data,
such as polygons. And the scene is
illuminated by one or more light sources
(16, 18). The 3D scene is rendered in
two dimensions (“2D”) and the 2D
image is suitable for display, such as on
a computer screen. The 2D view of the 3D scene is from the observer’s, or camera’s (14),
perspective and takes into account the light incident on the 3D object as viewed from the observer’s
perspective. The relative positions of the object, observer, and light sources are defined using a 3D
coordinate system (20). ’822 Patent col.1 ll.25–38, col.6 ll.28–57.
Figures 3 and 4, reproduced below, depict exemplary data structures and an image processing
flow for producing an image for display. The scene is rendered into 2D from the observer’s
(camera’s) view (step 102) and also from each light source’s view (step 104). The 2D data for each
view include image (e.g., color) and depth information associated with each point in the view’s

4

The disclosures of the ’822 Patent and the ’488 Patent are substantially the same. As such, the
Court cites the ’822 Patent, understanding that the cited material is also in the ’488 Patent.
4

2D coordinate system (data structures 51A, 51B, 51C, 51D, 51E, 51F). The 2D version of the
scene from the observer’s view is transformed from the observer’s coordinate system to the light
source’s coordinate system (step 106) and for each region in the observer’s view that is illuminated
by the light source, the light image information is accumulated in a light source buffer (data
structure 51G) (step 108). After the observer data is processed for each light source to generate the
accumulated light data, the accumulated light data is combined with the observer data to generate
the image for display (data structure 50; step 118). Id. at col.6 l.58 – col.9 l.22.
’822 Patent

Figure 3

Figure 4

The abstracts of the Asserted Patents are identical and provide:
The effects of lighting and resulting shadows within a computer simulated threedimensional scene are modeled by rendering a light depth image and a light color
image for each of the light sources. The light depth images are compared to a
camera depth image to determine if a point within the scene is lighted by the various
light sources. An accumulated light image is produced by combining those portions
of the light color images determined to be lighting the scene. The resulting
accumulated light image is then combined with a camera color image to produce a
lighted camera image that can be further processed and eventually displayed on a
computer display screen. The light color image can be static or dynamic.
Transformations between different perspective and/or coordinate systems can be
precalculated for fixed cameras or light sources. The various images and
5

manipulations can include individual pixel data values, multiple-pixel values,
polygon values, texture maps, and the like.
Claim 1 of the ’822 Patent and Claim 11 of the ’488 Patent, exemplary method and system
claims respectively, recite as follows:
’822 Patent Claim 1:
A shadow rendering method for use in a computer system, the method
comprising the steps of:
providing observer data of a simulated multi-dimensional scene;
providing lighting data associated with a plurality of simulated light sources
arranged to illuminate said scene, said lighting data including light image
data;
for each of said plurality of light sources, comparing at least a portion of said
observer data with at least a portion of said lighting data to determine if a
modeled point within said scene is illuminated by said light source and
storing at least a portion of said light image data associated with said point
and said light source in a light accumulation buffer; and then
combining at least a portion of said light accumulation buffer with said
observer data; and
displaying resulting image data to a computer screen.
’488 Patent Claim 11:
An arrangement configured to render shadows in a simulated multidimensional scene, the arrangement comprising:
an output to a display screen configured to display image data;
memory for storing data including observer data associated with a simulated
multi-dimensional scene, and lighting data associated with a plurality of
simulated light sources arranged to illuminate said scene, said lighting data
including light image data, said memory further including a light
accumulation buffer portion and a frame buffer portion;
at least one processor coupled to said memory and said output and operatively
configured to, for each of said plurality of light sources, compare at least a
portion of said observer data with at least a portion of said lighting data to
determine if a modeled point within said scene is illuminated by said light
source and storing at least a portion of said light image data associated with
said point and said light source in said light accumulation buffer, then
combining at least a portion of said light accumulation buffer with said
observer data, and storing resulting image data in said frame buffer, and
outputting at least a portion of said image data in said frame buffer via said
output.

6

Plaintiffs allege that Activision has infringed Claims 1–9 of the ’822 Patent and Claims 1–9
and 27–36 of the ’488 Patent by making, using, and selling certain video games and by inducing
others to use the games. (Dkt. No. 101 at 11–12.)
II.

LEGAL PRINCIPLES
A.

Claim Construction

“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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry … begins and ends in all cases with the actual words of the
claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
7

Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
claim terms are typically used consistently throughout the patent. Id. Differences among the claim
terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed that the independent claim does not
include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.

8

However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology and determining the particular
meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
explained the role of extrinsic evidence in claim construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and 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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

9

B.

Departing from the Ordinary Meaning of a Claim Term

There are “only two exceptions to [the] general rule” that claim terms are construed according
to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
specification or during prosecution.”5 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
in two instances: lexicography and disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable

Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
5

10

to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
III.

AGREED CONSTRUCTIONS
The parties have agreed to the following constructions set forth in their Joint Patent Rule

4-5(d) Claim Construction Chart (Dkt. No. 102).
Term6
“providing”



’822 Patent Claim 1
’488 Patent Claims 1, 27

“observer data of a simulated multidimensional scene”



Agreed Construction
making available

’822 Patent Claim 1
’488 Patent Claims 1, 27

data representing at least the color of objects
in a simulated multi-dimensional scene as
viewed from an observer’s perspective

“observer data associated with a simulated
multi-dimensional scene”


’488 Patent Claim 11

“a modeled point within said scene”



’822 Patent Claims 1, 6
’488 Patent Claims 1, 11, 27

order of the comparing, storing, and
combining steps



’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“displaying resulting image data to a
computer screen”


a point on a modeled object within said scene

’822 Patent Claim 1

the comparing and storing steps are
completed before beginning the combining
step

displaying the image data resulting from
combining at least a portion of the light
accumulation buffer with the observer data on
a computer screen

6

For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest-level claim in each dependency chain is listed, and (2) only asserted claims
identified in the parties’ Joint Patent Rule 4-5(d) Claim Construction Chart (Dkt. No. 102) are
listed.
11

Term6
“outputting resulting image data”


’488 Patent Claims 1, 27

“combining at least a portion of said light
accumulation buffer with said observer data”



’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

combining at least a portion of the data in the
light accumulation buffer with said observer
data


“A computer-readable medium carrying at
least one set of computer instructions
configured to cause at least one processor to
operatively render simulated shadows in a
multidimensional simulated scene”


Agreed Construction
outputting for presentation to a user the image
data resulting from combining at least a
portion of the light accumulation buffer with
the observer data

subject to having the terms (1) “at least a
portion of,” (2) “light accumulation
buffer” and (3) “observer data” construed
by the Court

the preamble is limiting

’488 Patent Claim 27
Having reviewed the intrinsic and extrinsic evidence of record, the Court hereby adopts the

parties’ agreed constructions.
IV.

CONSTRUCTION OF DISPUTED TERMS
A.

The Preambles of Claim 1 of the ’822 Patent and Claims 1 and 11 of the ’488
Patent

Disputed Term
“A shadow rendering method
for use in a computer system”


’822 Patent Claim 1

“A shadow rendering
method”


’488 Patent Claim 1

Plaintiffs’ Proposed
Construction
the preamble is not limiting
and no construction is
necessary

Defendants’ Proposed
Construction
the preamble is limiting

the preamble is not limiting
and no construction is
necessary

the preamble is limiting

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
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The Parties’ Positions
Plaintiffs submit: The limitations recited in the bodies of Claim 1 of the ’822 Patent and
Claims 1 and 11 of the ’488 Patent define structurally complete inventions without need for
reference to the preambles. The preambles do not provide antecedent basis for any terms in the
bodies of the claims and the preambles were not relied upon during prosecution of the Asserted
Patents. Rather, the preambles simply provide an intended use or name for the limitations recited
in the bodies of the claims. As such, the preambles are not limiting. (Dkt. No. 93 at 16–19, 31–
32.)
Defendants submit: The preambles are limiting because they provide an important aspect of
the inventions that is not apparent solely from the bodies of the claims; namely, that the claimed
inventions are directed to improvements in shadow rendering in 3D computer graphics, and not
simply to general lighting in 3D computer graphics. The Asserted Patents critique the
shortcomings of prior-art shadow rendering and explain that the inventions are directed
specifically to addressing these shortcomings with inventions based on additively lighting
unshaded portions of objects (as opposed to the disparaged prior-art approach of additively
darkening shaded objects). This was further explained by the patentee during inter partes review
of the patents, where it represented that “the point of the invention is to render light and shadows.”
In other words, the claims are directed to “rendering the occlusion of modeled points from light
sources … by other objects.” This does not encompass simply determining whether a “light source
is too far away from a given point to have any effect on it at all.” (Dkt. No. 90 at 15–21.)
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’822 Patent col.1 ll.57–59, col.2 ll.1–3, col.2 ll.7–10, col.2 ll.13–18, col.2
ll.36–38, col.2 ll.50–56, col.3 ll.8–9, col.7 ll.49–53, col.8 ll.62–67; James D. Foley et al., Computer

13

Graphics: Principles and Practice at 747 (2d ed. 1997) (“Foley”) (Defendants’ Ex. C, Dkt. No. 91
at 46–68); ’822 Patent IPR Hr’g Tr.7 at 44–45 (Defendants’ Ex. J, Dkt. No. 91 at 199–204).
Plaintiffs respond: Defendants have not provided evidence sufficient to disregard the general
rule that preambles are not limiting. The preambles state that shadow rendering is the intended
purpose of the claimed invention but the claims define structurally complete methods for achieving
this purpose. As explained in the Asserted Patents, the claims are directed to determining whether
a modeled point is illuminated, and a point is “shaded” if it is not illuminated. This encompasses
more than simply determining whether a point is occluded from the light source and indeed
encompasses determining whether a light source is too far away to illuminate the point. (Dkt. No.
96 at 6–15.)
Plaintiffs cite further intrinsic evidence to support their position: ’822 Patent, at [54] Title,
[57] Abstract, col.1 ll.6–16, col.2 ll.15–16, col.3 ll.6–35, col.4 ll.20–24, col.7 ll.43–52, col.8 ll.57–
63, col.12 ll.13–15.
Defendants respond: The Asserted Patents explain that shadow rendering is what the inventor
actually invented and intended to cover with the claims. The preambles in the claims at issue are
limiting because they recite “an essential characteristic of the system that informs the remainder
of the claim.” Specifically, the claims require “that the image ultimately output for display must
include shadows rendered by the preceding steps.” (Dkt. No. 95 at 7–12.)

7

Record of Oral Hearing Held July 18, 2017, Electronic Arts et al. v. Terminal Reality, Inc.,
IPR2016-00928, Paper 47 (also addressing IPR2016-00929 and IPR2016-00930).
14

Analysis
The issue in dispute distills to whether the preambles’ recitation of “shadow rendering” or
“render shadows” should be construed to require the claims to include an occlusion limitation.
They should not.
Under Federal Circuit precedent “a preamble is not limiting where a patentee defines a
structurally complete invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.” Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765,
770 (Fed. Cir. 2018) (quotation marks and citations omitted). Likewise, a preamble is not limiting
when it “merely gives a descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.” Am. Med. Sys. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir.
2010). A preamble is limiting, however, when it is “necessary to give life, meaning, and vitality to
the claim.” Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(quotation marks omitted). For example, “dependence on a particular disputed preamble phrase
for antecedent basis may limit claim scope because it indicates a reliance on both the preamble
and claim body to define the claimed invention.” Id. “Likewise, when the preamble is essential to
understand limitations or terms in the claim body, the preamble limits claim scope.” Id. “Further,
when reciting additional structure or steps underscored as important by the specification, the
preamble may operate as a claim limitation.” Id.
Here, the preambles do not add anything to the body of the claims. Each claim sets forth a
complete method of lighting a scene in a way that will render shadows as appropriate and
consistent with what the patentee described as the invention. Therefore, the preambles are not
limiting.

15

The Court is not persuaded by Defendants’ argument based on Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251 (Fed. Cir. 1989). In Corning, the body of the patent
claim was directed to an optical fiber without any reference to the waveguide attributes of the
invention. Id. at 1256. These waveguide attributes were specified in the patent as an important
feature of the invention and required structural limitations on the fiber that were not apparent in
the claim body. That is, the Corning invention was clearly an optical waveguide but the claim body
gave no effect to the waveguide aspect of the invention. Id. at 1256–57. Thus, the preamble
recitation of “optical waveguide” was limiting. Id. As set forth below, the claims at issue here are
distinguishable from the claim in Corning because the claims here capture the key features of the
invention in the bodies of the claims.
Here, the claims are analogous to the claim addressed in Georgetown Rail Equip. Co. v.
Holland L.P., 867 F.3d 1229 (Fed. Cir. 2017). The preamble of the claim at issue in Georgetown
recited a “system for inspecting a railroad track bed, including the railroad track, to be mounted
on a vehicle for movement along the railroad track.” Id. at 1234. While the phrase “mounted on a
vehicle for movement along the railroad track” was deemed by the Federal Circuit to describe the
“principal intended use of the invention,” it was held not limiting. Id. at 1236–37. The Federal
Circuit held that the “location of the system is not an essential feature of the invention,” as the
patent provided that it may be located other than on the vehicle. Id. Thus, the preamble recitation
of “mounted on a vehicle for movement along the railroad track” was not limiting.
Here, the bodies of the claims at issue capture the key aspects of the invention without
reference to the preambles and therefore are more akin to the claim addressed in Georgetown than
the claim addressed in Corning. The Asserted Patents are directed to technology for “rendering
lighting and shadows in computer graphic simulations.” ’822 Patent col.1 ll.7–9; see also, id. at

16

col.3 ll.6–17 (“improved lighting and shadowing methods and arrangements are provided … [that]
allow for multiple light sources to be modeled”). This is accomplished by accumulating light data
for lit objects in the scene of the simulation. See, e.g., id. at col.3 ll.25–30. The technology may be
used for rendering shadows as well as other lighting effects. For example, it “can also be used to
simulate dynamically changing light sources, interrupted light beams, reflected light beams, and/or
projected light images, such as, for example, motion picture, video, animation, and computer
graphics images.” Id. at col.3 l.64 – col.4 l.2; see also, id. at col.10 l.63 – col.11 l.13 (noting that
the invention may be used, e.g., “to simulate light that is reflected from changing surfaces, … [and]
an animation, motion picture or similar video image that is projected”). In other words, there are a
variety of intended uses for the invention. As in the Georgetown claim, the preambles here recite
the primary intended use of the invention, namely, shadow rendering, but do not recite an essential
feature of the invention. As the claims at issue here include bodies that define structurally complete
inventions, the preambles each represent a nonlimiting statement of intended use.
Accordingly, the Court determines that the preambles of Claim 1 of the ’822 Patent and of
Claims 1 and 11 of the ’488 Patent are not limiting.
B.

“determine if a modeled point within said scene is illuminated by said light
source”

Disputed Term

Plaintiffs’ Proposed
Construction
“determine if a modeled point determining if a point on a
within said scene is
modeled object within said
illuminated by said light
scene is illuminated by said
source”
light source



’822 Patent Claim 1
’488 Patent Claims 1, 11,
27

17

Defendants’ Proposed
Construction
calculate whether a modeled
point is lighted by, or shaded
from, said light source

The Parties’ Positions
Plaintiffs submit: The words “determine” and “illuminated” are readily understood without
construction and construing them as Defendants propose would improperly change the scope of
the claims. Specifically, “determine” should not be rewritten as “calculate.” The words either mean
the same thing, in which case rewriting is unnecessary, or they mean different things, in which
case rewriting is improper. Further, “illuminate” should not be rewritten as “lighted by, or shaded
from.” “Illuminated” is used in the Asserted Patents according to its plain meaning, i.e., “lit,” and
there is no support for injecting a “or shaded from” limitation into the construction. (Dkt. No. 93
at 24–26.)
In addition to the claims themselves, Plaintiffs cite the following intrinsic evidence to support
their position: ’822 Patent col.2 ll.15–18, col.8 ll.66–67.
Defendants submit: This limitation “refer[s] to an algorithm that calculates whether the point
being modeled is shaded from the light source by another object in the scene.” The Asserted
Patents consistently and solely describe determining whether a point is illuminated as determining
whether it “is lighted by, or shaded from, [the] light source” in the context of updating the light
accumulation buffer if it is lit and not updating the buffer if the point “is not lighted (i.e., is
shaded)” (quoting ’822 Patent col.8 ll.62–67). Essentially, the point is illuminated if it is not shaded
and determining whether it is illuminated requires determining whether it is shaded. As
consistently and solely described in the patents, this is accomplished by comparing depth data for
the point with that for the light source to determine if the point is hidden from the light source by
another object (shaded). This is how Plaintiffs’ experts in the EA Case and Inter Partes Reviews
explained the determining step. Ultimately, calculating whether a point is lighted by or shaded

18

from the light source is “a fundamental characteristic of the invention” rather than an exemplary
embodiment. (Dkt. No. 90 at 21–26.)
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’822 Patent col.2 ll.36–56, col.3 ll.8–9, col.7
ll.26–29, col.7 ll.41–43, col.8 ll.62–67, col.9 ll.35–44; ’822 Patent IPR Laub Decl. ¶¶ 41, 59
(Defendants’ Ex. L, Dkt. No. 91 at 210–24). Extrinsic evidence: EA Case Ferraro Decl. ¶ 15
(Defendants’ Ex. E, Dkt. No. 91 at 107–18).
Plaintiffs respond: The claims do not mention determining whether a point is shaded, only
whether it is illuminated. The statements of Plaintiffs’ expert in the ’822 Patent IPR that
Defendants rely on do not equate “determine if a modeled point … is illuminated by said light
source” with “calculating whether a modeled point is lighted by, or shaded from, said light source.”
Rather, the expert provided an example of a situation when an object is not illuminated by a light
source (a shaded object is not illuminated). Similarly, the statement of Plaintiffs’ expert in the EA
Case that Defendants rely on simply reflects that the claims require determining whether the point
is illuminated. (Dkt. No. 96 at 15–19.)
Plaintiffs cite further intrinsic evidence to support their position: ’822 Patent, at [57] Abstract.
Defendants respond: The Asserted Patents equate determining whether a point is illuminated
with determining whether it is shaded. Thus, the “determine if a modeled point within said scene
is illuminated by said light source” limitation does not encompass just any test for whether the
source effects the point, “e.g., whether it is too far away.” (Dkt. No. 95 at 13–15.)
Analysis
The issue in dispute is whether the “determine if a modeled point … is illuminated by said
light source” limitation requires a calculation of whether the point is lighted by or shaded from the

19

light source. It does not. While a shaded point is not illuminated by a light source, there are other
instances in which a point is not illuminated by a light source.
As set forth above in the section addressing the dispute as to the preambles, the Asserted
Patents expressly state that the lighting and shading methods are applicable to modeling
dynamically changing light sources that may variably illuminate, or not, a point in the scene
without consideration of intervening objects that may shade the point from the light source. Thus,
contrary to Defendants’ contention, the Asserted Patents do not meet the exacting standard to
redefine “illuminated” as “not shaded.” Further, the patents specifically disclose directional light
sources that may not illuminate a point by virtue of the direction. See, e.g., ’822 Patent col.6 ll.41–
43 (“Light source #1, in this example, is a uni-directional light source having a particular position,
orientation and constrained field-of-view.”), col.10 ll.40–43 (“These light sources, which are not
shown in FIG. 7C, are directional light sources having fixed positions with respect to room 200.”).
The patents provide that transformation between the light-source coordinate system and the
observer (camera) coordinate system may determine whether the light from the light source
illuminates a point. See, e.g., id. at col.8 ll.9–11 (“Thus, the resulting transformation table #1 can
be used to quickly determine which, if any, of pixels 60' (light image) correspond to a specific
pixel 60 (camera image).” (emphasis added)). That is, light from the source is not added to the
modeled point if it is not directed to the modeled point—the source does not illuminate the point
when there is no overlap of the light image and the camera image. This is determined through the
transformation between camera view and light-source view. See also, id. at col.11 ll.28–35 (noting
a light source facing in a direction such as to not illuminate an object (man) in the scene).

20

Accordingly, the Court construes this term as follows:


“determine if a modeled point within said scene is illuminated by said light
source” means “determine if a point on a modeled object within said scene is
illuminated by said light source.”

C.

“providing lighting data associated with a plurality of simulated light sources
arranged to illuminate said scene, said lighting data including light image
data”

Disputed Term
“providing lighting data
associated with a plurality of
simulated light sources arranged
to illuminate said scene, said
lighting data including light
image data”



’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

Plaintiffs’ Proposed
Construction
“lighting data” should be
construed to have its plain
and ordinary meaning (i.e.,
“data relating to the
representation of
simulated light sources
arranged to illuminate said
scene”)

Defendants’ Proposed
Construction
Light image data is required
for each of a plurality of light
sources.
“lighting data” means “2D
color and depth data, for a
plurality of simulated light
sources”

The Parties’ Positions
Plaintiffs submit: As explained in the Asserted Patents, “lighting data” is not limited to “2D
color and depth data.” Rather, 2D color and depth data is described as exemplary in the patents
and appears expressly in dependent claims (e.g., ’822 Patent Claim 4) indicating that “lighting
data” is not inherently limited to 2D color and depth data. (Dkt. No. 93 at 19–22.)
In addition to the claims themselves, Plaintiffs cite the following intrinsic evidence to support
their position: ’822 Patent col.3 ll.36–51, col.6 ll.41–43, col.12 ll.32–37.
Defendants submit: The Asserted Patents provide that “lighting data” must include at least
color data and depth data and that this data must be 2D data. Plaintiffs, and their experts, stated in
the EA Case and in the ’822 Patent IPR that “lighting data” necessarily includes 2D color data and
depth data for a plurality of simulated light sources. In the ’822 Patent IPR, Plaintiffs distinguished

21

prior art based on the fact that lighting data includes 2D color data and depth data. Finally, as
explained in the patents and by Plaintiffs in the EA Case and in the ’822 Patent IPR, lighting data
includes 2D color data and depth data for each of a plurality of light sources. (Dkt. No. 90 at 26–
34.)
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’822 Patent figs.3–4, col.3 ll.41–51, col.4
ll.24–28, col.4 ll.55–56, col.6 l.58 – col.7 l.42, col.8 ll.42–44, col.9 ll.3–8, col.9 ll.31–34, col.10
ll.63–65; ’822 Patent IPR Patent Owner Preliminary Response at 7–8 (Defendants’ Ex. H, Dkt.
No. 91 at 181–91), Patent Owner Response at 3–5 (Defendants’ Ex. I, Dkt. No. 91 at 192–98),
Hrn’g Tr. at 36 (Defendants’ Ex. J, Dkt. No. 91 at 199–204), Laub Decl.8 ¶¶ 56–57, 61, 78–79,
83–84 (Defendants’ Ex. L, Dkt. No. 91 at 210–24). Extrinsic evidence: EA Case Ferraro Decl.9 ¶¶
10, 12, 16 (Defendants’ Ex. E, Dkt. No. 91 at 107–18).
Plaintiffs respond: That lighting data is provided by each of a plurality of light sources is
required by other claim language. Including a “for each of a plurality of light sources” limitation
in the construction of “lighting data” therefore threatens to confuse rather than clarify claim scope.
The 2D color and depth data described in the Asserted Patents is exemplary, not definitional.
Specifically, the patents provide that “the data in the light image … can represent the intensity,
color, and/or pattern of light emitted” (quoting ’822 Patent col.7 ll.32–34). Certain dependent
claims (Claims 4, 14, and 42 of the ’822 Patent and Claims 4, 14, and 30 of the ’488 Patent)
expressly require the “lighting data” to include source and color data so it would be improper to
require “lighting data” to inherently include these limitations in the independent claims. The

8
9

Declaration of Leonard Laub, IPR2016-00928, Exhibit 2008.
Declaration of Richard F. Ferraro, EA Case, Dkt. No. 77-3.
22

statements by the experts in the EA Case and the ’822 Patent IPR that Defendants rely on are
descriptions of lighting data in the context of the exemplary embodiment of Figure 3 of the patents
and are not opinions on inherent characteristics of the claimed invention. Finally, the distinction
between the claims and the prior art that was presented in the ’822 Patent IPR is that the prior art
reference “does not teach that M1 is a look-up table that includes lighting data coordinates.” This
is not a disclaimer that limits “lighting data” to 2D color and depth data. (Dkt. No. 96 at 19–25.)
Plaintiffs cite further intrinsic evidence to support their position: ’822 Patent fig.3, col.3 l.63
– col.4 l.5, col.5 ll.28–31, col.6 ll.38–48, col.6 ll.59–60, col.7 ll.32–34; ’822 Patent IPR Laub Decl.
¶ 151.10
Defendants respond: Plaintiffs argued in the EA Case that lighting data was 2D data and the
EA Court accepted that position. As such, Plaintiffs are estopped from taking a different position
here. Further, Plaintiffs’ expert in the EA Case stated that the “lighting data” of the invention is
“2D color data and depth data for a plurality of simulated light sources.” Plaintiffs and their expert
in the ’822 Patent IPR distinguished the lighting data of the Asserted Patents from that in the prior
art on the ground that the prior art disclosed only depth data, and did not include illumination data.
Plaintiffs also argued in the ’822 Patent IPR that the claimed invention is distinct over the prior art
because it includes manipulation of 2D images. Finally, “lighting data” is used consistently in the
patents to refer to data that includes at least “2D color data and depth data.” This mandates the
conclusion that “2D color data and depth data” is not merely exemplary of the “lighting data” of

10

Paragraph 151 of the Laub declaration was not submitted by the parties. The declaration is
available to the public through the U.S. Patent and Trademark Office’s Patent Trial and Appeal
Board End to End System at https://ptab.uspto.gov/#/login.
23

the patents, but rather is necessarily included in the “lighting data” of the patents. (Dkt. No. 95 at
15–23.)
Defendants cite further intrinsic and extrinsic evidence to support their position: Intrinsic
evidence: ’822 Patent IPR Patent Owner Preliminary Response at 1, 2, 5 (Defendants’ Ex. H, Dkt.
No. 91 at 181–91). Extrinsic evidence: EA Case Ferraro Decl. ¶ 17 (Defendants’ Ex. E, Dkt. No.
91 at 107–18).
Analysis
There are two issues submitted to the Court, one of which is essentially undisputed: first,
whether “lighting data” is necessarily provided for each of the plurality of light sources, and
second, whether “lighting data” necessarily includes “2D color data and depth data.” As for the
first issue, lighting data is necessarily provided, but this is plainly expressed in the claims and is
not in dispute. Therefore, this limitation does not need to be incorporated into a construction of
“lighting data.” As for the second issue, “lighting data” expressly includes “light image data,”
which, as explained below, necessarily includes 2D data. However, it does not necessarily include
color and depth data. Therefore, “lighting data” does not need to be construed apart from “light
image data.”
The parties agree that lighting data is provided for each of a plurality of light sources. Since
there is no dispute, there is no need for the court to issue a construction to resolve the dispute.
The patents do not teach that “lighting data” necessarily includes color and depth data. The
independent claims at issue recite that lighting data includes light image data (“said lighting data
including light image data”) but otherwise do not specify the content of lighting data. The Asserted
Patents provide that “in certain embodiments, the lighting data includes source color data
associated with at least one of the light sources and source depth data associated with the plurality

24

of modeled polygons within the scene as rendered from a plurality of different light source’s
perspectives.” ’822 Patent col.3 ll.47–52 (emphasis added). Indeed, dependent Claim 4 of the ’822
Patent is directed to such an embodiment: “said lighting data includes source color data associated
with at least one of said light sources and source depth data associated with said plurality of
modeled polygons within said scene as rendered from a plurality of different light source’s
perspectives.” Id. at col.12 ll.32–37. This suggests that light-source color and depth data is not
inherently included in “lighting data.” See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc) (noting that the use of the term “steel baffles” “strongly implies that the term
‘baffles’ does not inherently mean objects made of steel”). Further, the Court is not persuaded by
Defendants’ argument that the description of the data structures of Figure 3 of the Asserted Patents
mandates that lighting data must include 2D color and depth data. At the beginning of this
description the patents provide: “FIG. 3 is a block diagram depicting exemplary arrangements of
modeling data as used to render lighting and shadows, in accordance with certain embodiments
of the present invention.” Id. at col.6 ll.58–61 (emphasis added). That is, what Defendants proffer
as definitional is expressly not definitional. To the extent Plaintiffs’ expert in the EA Case offered
any opinion that “lighting data” inherently includes color and depth data, that opinion is at odds
with the intrinsic record. As such, rather than somehow being definitional of a claim term, as
Defendants suggest, this testimony should be disregarded. See Phillips v. AWH Corp., 415 F.3d
1303, 1318 (Fed. Cir. 2005) (en banc) (“a court should discount any expert testimony that is clearly
at odds with the claim construction mandated by the claims themselves, the written description,
and the prosecution history, in other words, with the written record of the patent” (quotation marks
omitted)). The Court is also not persuaded that anything said by Plaintiffs or their expert in the

25

Inter Partes Reviews, as of record here, rises to the level of disclaimer that would require “lighting
data” to necessarily include color and depth data.
As set forth below, the Court understands that “light image data” is necessarily twodimensional (2D) data. Thus, “lighting data” necessarily includes 2D data because it expressly
includes “light image data.” Reflecting this in a construction of “lighting data,” however, is
unnecessary and potentially misleading. For example, it could suggest that “lighting data”
necessarily includes data beyond “light image data,” which is not the case.
Accordingly, the Court determines there is no dispute regarding whether there is lighting data
for a plurality of simulated light sources, that “lighting data” does not inherently include color and
depth data, and that the term has its plain and ordinary meaning and does not need to be otherwise
construed apart from “light image data,” which it expressly includes.
D.

“light image data”

Disputed Term
“light image data”



’822 Patent Claim 1
’488 Patent Claims 1, 11,
27

Plaintiffs’ Proposed
Construction
for each of the plurality of
light sources, data
representing an image of the
light emitted by the light
source to illuminate the scene
as viewed from the light
source’s perspective

Defendants’ Proposed
Construction
for each of the plurality of
light sources, pixel data
values representing the light
emitted by the light source to
illuminate the scene as
viewed from the light
source’s perspective

The Parties’ Positions
Plaintiffs submit: In the EA Construction, the EA Court held that “light image data” was not
limited to “pixel data values,” but rather encompasses data structures other than pixels and data
for a single pixel. There is no reason to deviate from the EA Construction. (Dkt. No. 93 at 20, 22–
23.)

26

Defendants submit: The construction of “light image data” set forth in the EA Construction
does not resolve the dispute between the parties here; namely, whether “light image data” must
represent pixel data. As consistently and repeatedly described in the Asserted Patents, the light
image data is pixels. Further, light image data must be in the form of pixels, or the claimed method
cannot add the light image data to the light accumulation buffers for the pixels that are illuminated.
In the ’822 Patent IPR, Plaintiffs represented that the “light image data” are pixels, that this is an
important aspect of the invention, and that this aspect is a distinction over the prior art. (Dkt. No.
90 at 34–37.)
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’822 Patent figs.3–4, col.3 ll.40–52, col.4 ll.32–35, col.7 ll.15–17, col.7
ll.19–22, col.7 ll.30–32, col.7 ll.34–37, col.8 ll.8–10, col.8 ll.23–27, col.8 ll.45–47, col. 8 ll.57–
60, col.8 ll.62–66, col.10 ll.63–66, col.11 ll.51–56; ’822 Patent IPR Patent Owner Preliminary
Response at 1–2, 5, 7–8, 11 (Defendants’ Ex. H, Dkt. No. 91 at 181–91), Laub Decl. ¶¶ 56–57
(Defendants’ Ex. L, Dkt. No. 91 at 210–24).
Plaintiffs respond: The Asserted Patents expressly provide that light image data may be
formed as pixel values but that “other conventions and/or arrangements can also be used for storing
and manipulating the data” (quoting ’822 Patent col.7 ll.1–3). For example, and as explained in
Foley, which is incorporated into the Asserted Patents by reference, it is known in the art that light
image data may be stored in vector-system format or metafiles rather than as pixels. Further,
dependent Claim 5 of the ’822 Patent, for example, specifies when light-source data is associated
with pixels, suggesting that light image data is not inherently pixels. Finally, neither Plaintiffs nor
their expert witness characterized “light image data” as necessarily pixel data during the ’822
Patent IPR. Specifically, the IPR statements that Defendants rely on are made in the context of

27

explaining the background of the technology or to note a distinction between the rendering method
of the ’822 Patent and that of a prior art reference, rather than to distinguish the claims from prior
art based on light image data necessarily being pixels. In fact, Plaintiffs acknowledged that the
distinguished prior art reference in fact disclosed using pixel data. (Dkt. No. 96 at 25–32.)
Plaintiffs cite further intrinsic evidence to support their position: ’822 Patent col.7 ll.59–61,
col.11 ll.51–61; ’822 Patent IPR Laub Decl. ¶¶ 56–57 (Defendants’ Ex. L, Dkt. No. 91 at 210–24),
Patent Owner Preliminary Response at 5–7, 11–12 (Defendants’ Ex. H, Dkt. No. 91 at 181–91;
Plaintiffs’ Ex. K, Dkt. No. 97-7), Hr’g Tr. at 50:9–11 (Plaintiffs’ Ex. L, Dkt. No. 97-8), ’822 Patent
IPR Final at 16–17 (Plaintiffs’ Ex. M, Dkt. No. 97-9); Foley at 9–12, 844, 849 (Plaintiffs’ Exs. F–
H, Dkt. Nos. 97-2, 97-3, 97-4).
Defendants respond: In the EA Case, the EA Court did not have the benefit of the record of
the Inter Partes Reviews when construing “light image data.” Here, the Court must construe the
term in the full light of that record and hold Plaintiffs to statements made to secure patentability
of the Asserted Patents. Further, the Court here should reconsider the EA Construction
characterization of the disclosure at column 11, line 51–61 of the ’822 Patent. Specifically, rather
than supporting that light image data may be polygons rather than pixels, it states the light image
may be rendered for each polygon. This comports with light image data being pixels. (Dkt. No. 95
at 23–27.)
Defendants cite further extrinsic evidence to support their position: EA Case Ferraro Decl. ¶
17 (Defendants’ Ex. E, Dkt. No. 91 at 107–18).

28

Analysis
The issue in dispute is whether “light image data” is necessarily in the form of pixels. Light
image data is necessarily two-dimensional data that is distinct from depth data, but this does not
mean that it is necessarily pixel values.
The Court generally agrees with the assessment of “light image data” set forth in the EA
Construction. 2016 WL 5415429, at *10–11. Specifically, the Asserted Patents provide that “light
image data” does not necessarily come in array or matrix form:
With this in mind, FIG. 3 is a block diagram depicting exemplary arrangements of
modeling data as used to render lighting and shadows, in accordance with certain
embodiments of the present invention. For convenience, the various rendered data
in FIG. 3 is illustrated as being logically stored in a plurality of 2D matrices or data
bases 50 and 51A-G, each having an X axis and a Y axis. Preferably, and in this
example, the X and Y axis correspond an exemplary output device 56 having a
screen that displays X by Y number of pixels when provided corresponding redgreen-blue (RGB) pixel data values. Those skilled in the art will recognize that
other conventions and/or arrangements can also be used for storing and
manipulating the data.
’822 Patent col.6 l.58 – col.7 l.3 (emphasis added). In light of this disclosure, and with an
understanding of “pixels” as “arrays of data corresponding to display device pixels,” the EA Court
held that “light image data” is not limited to “pixels.” 2016 WL 5415429, at *11 (“‘Light image
data’ is not necessarily in pixel (or array) form.”), *15 (“As set forth in the above section on ‘light
image data’ the Court does not understand that scene-view image data is necessarily in the form
of pixels (or arrays of data corresponding to display-device pixels)”). Importantly, the EA Court
did not hold that light image data may be other than 2D data. Indeed, the EA Court noted that the
lighting data (which is defined by the light image data) represents a 2D view:
That said, the Court understands that the “modeled point within said scene” refers
to a point on a modeled 3D object within the simulated scene. But this does not
mean that the “comparing” step necessarily is comparing 3D data. Rather, the claim
language expresses that the comparison is between observer data and lighting
data, both of which represent 2D views of the scene.
29

Id. at *15 (emphasis added). The Court here agrees with the EA Construction to the extent that
“light image data” is 2D data that is not necessarily limited to “arrays of data corresponding to
display-device pixels.” Id.
In the ’822 Patent IPR, Plaintiffs represented the invention as operating at the “pixel level,”
but the Court does not understand this to equate “light image data” with arrays of data
corresponding to display-device pixels. For instance, in the ’822 Patent IPR, Plaintiffs stated that
“the ’822 patent provides techniques that operate at a pixel level on fully rendered images in twodimensional space, in contrast to scan-converted three-dimensional polygons.” Preliminary
Response at 1–2, IPR2016-00928, paper 6 (July 26, 2016) (emphasis added). Operating at the 2D
level was presented to the PTAB as a point of novelty:
To finally provide the rendered camera data that the ’822 patent initially provides,
Segal must perform scan-conversion of the 3D scene at every pass to incrementally
render the camera data. As previously described, this scan conversion produces a
series of screen points for every polygon in the scene. In contrast, the ’822 patent
performs its lighting and shadowing on the X by Y array of pixels illustrated in
Figure 3 of the ’822 patent.
Id. at 11 (emphasis added). These statements are characterizations of the invention, not of an
exemplary embodiment. That said, Plaintiffs also represented to the PTAB that “light image data”
is “data representing the light emitted by each of the plurality of light sources.” Id. at 17. Further,
construing “light image data” as “pixel data” may suggest a correspondence between the display
pixels and the “light image data.” Indeed, Defendants suggested this at the hearing. Plaintiffs did
not characterize “pixels” in this way in the ’822 Patent IPR nor did the patentee characterize pixels
this way in the Asserted Patents. In fact, the patents teach that “light image data” does not
necessarily correspond to the display. See, e.g., ’822 Patent col.3 ll.24–35 (describing that the
observer data, modified by the lighting data “if a modeled point within the scene is illuminated,”
is displayed, rather than the lighting data itself). This suggests that “light image data” is not
30

necessarily limited to pixels. Taken in its entirety and in context, the Preliminary Response in the
’822 Patent IPR does not present a clear and unmistakable disclaimer of 2D data that are not pixels.

Accordingly, the Court construes “light image data” as follows:


“light image data” means “for each of the plurality of light sources, 2D data
representing the light emitted by the light source to illuminate the scene as viewed
from the light source’s perspective.”

E.

“storing at least a portion of said light image data associated with said point
and said light source” and “at least a portion of”

Disputed Term
“storing at least a portion of
said light image data
associated with said point and
said light source”



Defendants’ Proposed
Construction
storing all or a subset of said
light image data associated
with said point and said light
source

plain and ordinary meaning

all or a subset of

’822 Patent Claim 1
’488 Patent Claims 1, 11,
27

“at least a portion of”



Plaintiffs’ Proposed
Construction
“at least a portion of” has its
plain and ordinary meaning

’822 Patent Claim 1
’488 Patent Claims 1, 11,
27
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.
The Parties’ Positions
Plaintiffs submit: By limiting “at least a portion of” to “all or a subset of” Defendants’
proposed construction threatens to improperly exclude a portion of the light image data that is a
fractional portion of that data. (Dkt. No. 93 at 26–28.)

31

Defendants submit: The term “at least a portion of” needs to be construed to clarify that it
does not encompass just any numerical derivative of the data. This comports with the reasoning
expressed in the EA Construction, where the EA Court held that it “does not understand that the
plain and ordinary meaning of ‘at least of portion of’ data encompasses any number that is a
fractional component of one number within the set.” This also comports with Plaintiffs’ position
in the EA Case, where Plaintiffs argued that the plain meaning of “at least of portion of” is “at
least some but potentially all of.” Finally, this comports with the disclosure of the Asserted Patents,
which describes portions of data as subsets of the data rather than derivatives of the data.
Ultimately, “storing data that are the result of performing mathematical operations on values
identified as ‘light image data’ in the ‘providing’ step are not the same as storing ‘at least a portion
of’ ‘light image data.’” (Dkt. No. 90 at 41–45.)
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’822 Patent fig.4, col.4 ll.34–35, col.7 ll.15–
19, col.8 ll.45–60, col.8 ll.63–67, col.9 ll.1–12. Extrinsic evidence: EA Case Ferraro Decl. ¶ 21
(Defendants’ Ex. E, Dkt. No. 91 at 107–18).
Plaintiffs respond: The plain meaning of “at least a portion of” data does not exclude fractional
comparisons of the data, does not encompass a portion that does not correspond to the data, and
does not exclude a portion that corresponds to the data but has also been altered or modified. (Dkt.
No. 96 at 36–38.)
Defendants respond: As described in the Asserted Patents, “at least a portion of” data does not
encompass “for example, dividing a number provided as light image data by another number and
storing the result as being ‘a portion of’ any of the data.” Specifically, “[p]erforming arbitrary

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mathematical operations on the provided data and storing the result is not equivalent to storing ‘at
least a portion of’ that data.” (Dkt. No. 95 at 31–33.)
Defendants cite further intrinsic evidence to support their position: ’822 Patent col.7 ll.46–
48, col.8 l.39 – col.9 l.12.
Analysis
The issue in dispute distills to whether “at least a portion of” data necessarily refers to at least
a subset of the data. As the Court understands Defendants’ use of “subset,” it does not. Specifically,
“at least a portion of [data]” does not necessarily exclude transformed data, as Defendants contend.
The Court rejects Defendants’ proposed construction that essentially requires the form of a
portion of data to be the same as the form of the data. Indeed, this form-preserving limitation
expressed in Defendants’ argument threatens to exclude both exemplary and claimed
embodiments. For instance, the claims recite “storing at least a portion of said light image data …
in a light accumulation buffer.” See, e.g., ’822 Patent col.12 ll.15–18. As explained in the Asserted
Patents, the portion of light image data may be stored in the accumulation buffer by numerically
adding it to values already in the accumulation buffer. See, e.g., id. at col.9 ll.42 (“ACCUM (SPx,
SPy)+=LIGHT IMAGE (LPx, LPy)”). Indeed, this is a main aspect of the invention—to
accumulate light on illuminated modeled points. Thus, the portion of data that is stored is
mathematically transformed. Said differently, mathematically transforming light image data and
storing the result is exactly what the patents disclose. This is encompassed by the claims.
Accordingly, the Court determines that “storing at least a portion of said light image data
associated with said point and said light source” does not need to be construed apart from the
construction of “at least a portion of.” The Court finds that any interpretation of “at least a portion
of” as requiring storing an untransformed subset of data would be inconsistent with the plain and

33

ordinary meaning of the term. Therefore, the Court rejects Defendants’ “all or a subset of”
limitation (as that proposed limitation is explained by Defendants), and determines that “at least a
portion of” has its plain and ordinary meaning without the need for further construction.
F.

“light accumulation buffer”

Disputed Term
“light accumulation buffer”



’822 Patent Claim 1
’488 Patent Claims 1, 27

Plaintiffs’ Proposed
Construction
memory for storing the light
image data for cumulative
light falling on a region in the
observer image
corresponding to a modeled
point

Defendants’ Proposed
Construction
memory for storing the light
image data for cumulative
light falling on each
illuminated region in the
observer image
corresponding to a modeled
point

The Parties’ Positions
Plaintiffs submit: The Asserted Patents provide for storing only the portion of the scene that
is changed, rather than storing “each illuminated region” as Defendants propose. In the EA Case,
the EA Court reached this same conclusion when it held that the light data stored in the light
accumulation buffer “may comprise data for only those pixels that change from frame to frame,
and not all pixels must change.” (Dkt. No. 93 at 28–31.)
In addition to the claims themselves, Plaintiffs cite the following intrinsic evidence to support
their position: ’822 Patent col.7 ll.47–49, col.8 ll.57–67, col.11 ll.15–27, col.11 ll.58–59.
Defendants submit: The EA Construction did not address the dispute between the parties here;
namely, whether the light accumulation buffer necessarily stores data for each illuminated region.
As described in the Asserted Patents, the light accumulation buffer accumulates light for each lit
pixel in the scene. It thus stores light image data for each illuminated region. This is how Plaintiffs’
expert in the ’822 Patent IPR characterized the light accumulation buffer to the PTAB and this is

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how Plaintiffs presented the light accumulation buffer to the EA Court in the EA Case. (Dkt. No.
90 at 38–41.)
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’822 Patent figs.3–4, col.7 ll.4–6, col.7 ll.15–53, col.7 ll.46–52, col.8 l.39 –
col. 9 l.5, col.9 ll.8–12; ’822 Patent IPR Laub Decl. ¶¶ 62–63 (Defendants’ Ex. L, Dkt. No. 91 at
210–24).
Plaintiffs respond: Defendants’ proposed construction would require processing of every
region in a scene for every frame in order to store each region, which contradicts the Asserted
Patents’ teachings that only regions that change from frame to frame need to be processed and the
lighting results stored. (Dkt. No. 96 at 32–36.)
Plaintiffs cite further intrinsic evidence to support their position: ’822 Patent col.3 ll.15–19,
col.11 ll.18–30, col.8 ll.56–60.
Defendants respond: As explained in the patents, the purpose of the light accumulation buffer
is to accumulate “light from all the light sources that illuminate each pixel in the observer image.”
For pixels that do not change from frame to frame, the data in the buffer does not change and does
not need to be recomputed, but it is still stored. (Dkt. No. 95 at 28–31.)
Defendants cite further intrinsic evidence to support their position: ’822 Patent col.9 ll.3–12;
’822 Patent IPR Institution at 12–13 (Defendants’ Ex. Q, Dkt. No. 95-1 at 9–16).
Analysis
The issue in dispute is whether the light accumulation buffer necessarily stores data for each
illuminated region in a scene. While the claims plainly require that the accumulation buffer stores
certain light data “for each of [a] plurality of light sources,” they require storage of data for only

35

“an” illuminated modeled point, not all points. That is, the claims do not require (though they
encompass) accumulating light for every modeled point in the scene.
The claims require processing of each of a plurality of light sources, but do not expressly
require processing of each modeled point in a scene. For example, Claim 1 of the ’822 Patent,
produced and annotated here, recites
that

“for

each”

light

source,

“determine if a modeled point … is
illuminated … and storing at least a
portion of said light image data … in
a light accumulation buffer.” The
claim does not express that light is
stored in the accumulation buffer for
each illuminated point. The lack of
an

express

point

for-each-illuminated-

limitation

is

meaningful,

especially considering the claim

’822 Patent
1. A shadow rendering method for use in a
computer system, the method comprising the steps
of:
providing observer data of a simulated multidimensional scene;
providing lighting data associated with a plurality
of simulated light sources arranged to illuminate
said scene, said lighting data including light
image data;
for each of said plurality of light sources,
comparing at least a portion of said observer
data with at least a portion of said lighting data
to determine if a modeled point within said
scene is illuminated by said light source and
storing at least a portion of said light image
data associated with said point and said light
source in a light accumulation buffer; and then
combining at least a portion of said light
accumulation buffer with said observer data; and
displaying resulting image data to a computer
screen.

expressly requires that light is stored for each light source associated with an illuminated point.
Further, the Asserted Patents specifically teach that the accumulation buffer may not store lighting
data for all portions of a scene. For example, the patents provide that only a partial view needs to
be processed to provide lighting and shadow rendering:
RENDER EACH VIEW (PARTIAL IF THE LIGHT IS STATIONARY)
CLEAR ACCUM BUFFER
FOR EACH LIGHT SOURCE …
FOR EACH PIXEL IN CAMERA IMAGE SPxSPy…
TRANSFORM EACH SP TO A LP {LIGHT PIXEL} USING EITHER:
TRANSFORM LOOK-UP TABLE,
36

OR
MATRIX TRANSFORMATION CALCULATION
IF LP2 <LIGHT DEPTH (LPx, LPy) THEN
ACCUM (SPx, SPy)+=LIGHT IMAGE (LPx, LPy)
FOR EACH PIXEL IN CAMERA IMAGE …
CAMERA IMAGE (SPx, SPy)*=ACCUM (SPx, SPy)
’822 Patent col.9 ll.31–44 (emphasis added). That only partial views are rendered but the
accumulation buffer is cleared for each rendering pass (“CLEAR ACCUM BUFFER”) indicates
that the accumulation buffer does not necessarily store accumulated light for all points in the scene.
This is further explained with reference to an exemplary application of the process:
With regard to man 208 as depicted in depth image 220, the depth image 220 has
been further processed in this example to include data relating to the depth of man
208. This can be accomplished, for example, by comparing previous frames and
completing new transform calculations for pixels that have changed and that are in
the depth image for the light source. Thus, for example, from the previous frame,
man 208 may have moved slightly (e.g., in response to inputs from the user). A
portion of the pixels are identified as having changed from the previous frame. The
portion of the pixels that changed are then transformed and processed to generate
new modified light depth data 228. In this manner, only those portions of the scene
that change need to be reprocessed.
Id. at col.11 ll.14–27 (emphasis added). Thus, the light accumulation buffer does not necessarily
store data for every illuminated point, or region, in the scene.
Finally, the parties each propose “corresponding to a modeled point” in their constructions,
but “corresponding to the modeled point” better reflects the surrounding claim language, which
indicates that the information that is stored in the accumulation buffer is light image data associated
with the modeled point determined to be illuminated by the light source. See, e.g., ’822 Patent
col.12 ll.11–18 (Claim 1, reciting “determine if a modeled point within said scene is illuminated
by said light source and storing at least a portion of said light image data associated with said
point” (emphasis added)).
Accordingly, the Court construes “light accumulation buffer” as follows:

37



“light accumulation buffer” means “memory for storing the light image data for
cumulative light falling on a region in the observer image corresponding to the
modeled point.”

V.

CONCLUSION
The Court adopts the constructions set forth above, as summarized in the following table. The

parties are ORDERED that they may not refer, directly or indirectly, to each other’s claimconstruction positions in the presence of the jury. Likewise, the parties are ORDERED to refrain
from mentioning any portion of this opinion, other than the actual definitions adopted by the Court,
in the presence of the jury. Any reference to claim-construction proceedings is limited to informing
the jury of the definitions adopted by the Court.
Group

A

Term
“A shadow rendering method for use in
a computer system”


’822 Patent Claim 1

“A shadow rendering method”


B

C

the preamble is not limiting

’488 Patent Claim 1

“determine if a modeled point within
said scene is illuminated by said light
source”



determine if a point on a modeled
object within said scene is illuminated
by said light source

’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“providing lighting data associated
with a plurality of simulated light
sources arranged to illuminate said
scene, said lighting data including light
image data”



Construction
the preamble is not limiting

’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

38

plain and ordinary meaning, subject to
construction of “light image data”

Group

D

Term
“light image data”



Construction
for each of the plurality of light
sources, 2D data representing the light
emitted by the light source to
illuminate the scene as viewed from the
light source’s perspective

’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“storing at least a portion of said light
image data associated with said point
and said light source”
E




’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“at least a portion of”



plain and ordinary meaning

’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“light accumulation buffer”
F




memory for storing the light image data
for cumulative light falling on a region
in the observer image corresponding to
the modeled point

’822 Patent Claim 1
’488 Patent Claims 1, 27

“providing”



plain and ordinary meaning

making available

’822 Patent Claim 1
’488 Patent Claims 1, 27

“observer data of a simulated multidimensional scene”
 ’822 Patent Claim 1
AGREED  ’488 Patent Claims 1, 27
“observer data associated with a
simulated multi-dimensional scene”


’488 Patent Claim 11

“a modeled point within said scene”



data representing at least the color of
objects in a simulated multidimensional scene as viewed from an
observer’s perspective

’822 Patent Claims 1, 6
’488 Patent Claims 1, 11, 27

39

a point on a modeled object within said
scene

Group

Term
order of the comparing, storing, and
combining steps



’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“displaying resulting image data to a
computer screen”


’822 Patent Claim 1

“outputting resulting image data”


’488 Patent Claims 1, 27

Construction
the comparing and storing steps are
completed before beginning the
combining step

displaying the image data resulting
from combining at least a portion of the
light accumulation buffer with the
observer data on a computer screen
outputting for presentation to a user the
image data resulting from combining at
least a portion of the light accumulation
buffer with the observer data

“combining at least a portion of said
light accumulation buffer with said
observer data”

combining at least a portion of the data
in the light accumulation buffer with
said observer data






’822 Patent Claim 1
’488 Patent Claims 1, 11, 27

“A computer-readable medium
carrying at least one set of computer
instructions configured to cause at least
one processor to operatively render
simulated shadows in a
multidimensional simulated scene”


subject to the above constructions
of “at least a portion of,” “light
accumulation buffer,” and
“observer data …”

the preamble is limiting

’488 Patent Claim 27

SO ORDERED.
September 6, 2019.

BARBARA M. G. LYNN
CHIEF JUDGE

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