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Warner Norcross + Judd LLP is a corporate law firm with over 230 attorneys serving clients in nine offices throughout Michigan. Among the largest law firms in Michigan, Warner works in virtually all areas of business law.

Michigan Law Firm - Warner Norcross + Judd LLP

Back in January of this year, I made five predictions regarding the development of augmented reality law in 2012. &nbsp;One of those was that we'd see the first AR-related patent infringement litigation. &nbsp;And I further predicted it would involve "physical eyewear with AR capabilities."

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Turns out I was mostly right. &nbsp;On June 26, a judge of the U.S. District Court for the Southern District of New York issued what appears to be the first substantive <a href="http://augmentedlegality.wnj.com/wp-content/uploads/2012/07/Tomita-decision-from-pacer.pdf" target="_blank" rel="noreferrer noopener">decision</a> in an AR-related patent infringement case. &nbsp;Although the device in question isn't "eyewear" per se, it is one of the most popular AR-capable units on the market today: the <a href="http://www.nintendo.com/3ds/" target="_blank" rel="noreferrer noopener">Nintendo 3DS</a> portable game console. &nbsp;And&nbsp;it turns out&nbsp;the case has been pending since June 2011, although this is the first substantive decision from the court on the merits of the case, and (as far as I can tell) the first to mention AR.

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Plaintiffs ("Tomita") are the owners of <a href="http://www.google.com/patents?id=ngetAAAAEBAJ&amp;printsec=frontcover&amp;dq=7,417,664&amp;source=bl&amp;ots=AM_9Blo2GP&amp;sig=wYY0eFi8aAbW32MTMYTkub0DbnA&amp;hl=en&amp;sa=X&amp;ei=vqf-T83yE4jLqgHtt8SKCQ&amp;sqi=2&amp;ved=0CDMQ6AEwAA" target="_blank" rel="noreferrer noopener">U.S. Patent No.&nbsp;7,417,664</a>, issued in August 2008 and titled "Stereoscopic image picking up and display system based upon optical axes cross-point information." &nbsp;As described by the court, "the '664 patent attempts 'to provide a stereoscopic video image&nbsp;pick-up and display system which is capable of providing the stereoscopic video image having natural&nbsp;stereopsis even if the video image producing and playback conditions are different.'"

Tomita alleges that the 3DS infringes this patent. &nbsp;It's important to note that the case is ongoing and there has not yet been any determination of liability on Nintendo's part. &nbsp;In fact, Nintendo has already filed a motion challenging the June 26 decision. &nbsp;What the June 26 opinion did was to reject Nintendo's motion to dismiss the case. &nbsp;The court determined instead that there was enough evidence to allow the case to proceed to a jury.

Most of the discussion in the parties' arguments and the court's opinion focuses on how the 3DS's cameras work to capture 3D images. &nbsp;The patent describes a "means for measuring cross-point (CP ) information on the CP&nbsp;of optical axes of [the] pickup means." The two cameras built into the 3DS are arranged in parallel, but the parties and their experts disagreed over whether the optical axes of these cameras would nevertheless intersect. &nbsp;The court agreed with Tomita that they would.

In addition, as described by the court and the parties, the system described by '664 patent includes a "manual entry unit" through which the viewer&nbsp;can change "the operation condition of the display control circuit." &nbsp;The 3DS has at least two modes--"Camera" mode and "AR games" mode. &nbsp;And it has two means of adjusting the three-dimensional image it displays--a circle pad and a "3D depth slider."&nbsp; In both the camera&nbsp;application and the AR games application, the 3DS's 3D depth slider only changes the display from a&nbsp;two-dimensional image (turning the three-dimensional display "off") to a three-dimensional one (turning&nbsp;the three-dimensional display "on").

The dispute over this feature was whether, by turning three-dimensional viewing on or&nbsp;off, the 3D depth slider operates as a "manual entry unit" within the offset presetting means's structure. &nbsp;To infringe the '664 patent, "the relevant structure" in the 3DS must "perform the identical function&nbsp;recited in the claim."

The court found that "a reasonable jury could find that the 3DS's 3D depth slider constitutes a component of the offset presetting means's structure," performing one aspect of the identical function recited in the claim.&nbsp; "Specifically," it continued,

the '664&nbsp; patent notes that the "manual entry unit may be [a] switch. . . which is actuated by the viewer depending upon user's&nbsp; preferences for changing the operation conditions of the display control circuit." Both parties acknowledge that the 3D depth slider functions in the AR Games application as a "switch," allowing the user to exercise control over the display control circuit's operation conditions. Specifically, the 3D depth slider allows the viewer to determine whether the display circuit presents an offset at all. Thus, a reasonable jury could find that the manual entry unit, along with the circuits described in the '664 patent, performs the function of "offsetting and displaying" video images by allowing the user to determine whether the circuits will display an offset.

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On this basis, the court allowed Tomita to pursue its claim that, because the unit's 3D depth adjustment switch allows users to adjust the 3D image they see while in "AR Games" mode, the 3DS allegedly infringes the '664 patent.

This isn't the sexiest or most directly AR-related fact pattern I could have envisioned.&nbsp; It is, however, something far scarier for companies throughout the AR industry: it's <em>real</em>.

As I've written about before, patents covering various means for augmenting reality have existed for decades, and more are being applied for every day.&nbsp; We haven't yet seen much litigation in the industry, but that's only because very few businesses have yet made a significant amount of money through AR.&nbsp; Just like the mobile phone business and every other tech sector, once the money starts to come in and the technology gets more popular, the lawsuits will come.

My firm has already counseled a number of AR businesses on patent and other IP issues.&nbsp; Have you taken steps to protect your IP portfolio, or to insulate yourself from infringement liability?

Augmented Legality

Emerging Media and Technologies

Partner

Brian D. Wassom

Information Technology Transactions

Tomita v. Nintendo: the First Augmented Reality Patent Infringement Case

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Tomita v. Nintendo: the First Augmented Reality Patent Infringement Case

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