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Virtual Solutions, LLC v. Microsoft Corp.

United States District Court, S.D. New York

February 15, 2013


Memorandum Denying Reconsideration March 7, 2013.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Timothy E. Grochocinski, Esq., Innovalaw, P.C., Orland Park, IL, Anthony G. Simon, Esq., Michael P. Kella, Esq., The Simon Law Firm, P.C., Saint Louis, MO, Harold Y. MacCartney, Jr., Esq., MacCartney, MacCartney, Kerrigan & MacCartney, Nyack, NY, for Virtual Solutions, LLC.

Ruffin B.Cordell, Esq., Lauren A. Degnan, Esq., Cherylyn Esoy Mizzo, Esq., Robert Courtney, Esq., Fish & Richardson P.C., Washington, DC, Jonathan A. Marshall, Esq., Leah A. Edelman, Esq., Fish & Richardson P.C., New York, NY, for Microsoft Corp.


SHIRA A. SCHEINDLIN, District Judge.


Virtual Solutions, LLC (" Virtual" ) brings this action against Microsoft Corporation (" Microsoft" ). Virtual claims that Microsoft has infringed on claims 1-3, 5, 7, 8-9, and 22 of U.S. Patent No. 6,507,353 (" the '353 Patent" ), of which Virtual is the exclusive licensee. Microsoft now moves

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for summary judgment on the grounds that claims 1 and 8 of the '353 Patent are invalid for indefiniteness. Also before the Court are the parties' submissions related to the Markman hearing that took place on January 22, 2013. At this hearing, the Court also heard oral arguments on the present motion. For the following reasons, the motion is granted.


A. The Patent

The '353 patent was filed on December 10, 1999 and was issued by the Patent and Trademark Office (" PTO" ) on January 14, 2003.[3] It is entitled " Influencing Virtual Actors in an Interactive Environment." [4] The patent claims " [a] method for generating a behavior vector for a virtual actor in an interactive theat[er] by interpreting stimuli from visitors ...." [5] The specification states that the object of the patent is " to provide a method for interacting with virtual actors in an interactive environment[,]" and " to simulate ‘ real-life’ behaviors[ ] of the virtual actors." [6]

The specification teaches that " [c]ombining the security of a controlled environment with the possibility to interact almost naturally with animal kind has always been a dream[,]" [7] and that viewing animals in captivity does not live up to this dream, because animals in captivity alter their behaviors.[8] The specification further teaches that, prior to the ' 353 Patent, virtual reality had showed promise in bringing this dream to life, but that the interactivity of virtual reality at the time was limited by its use of scripted scenarios.[9]

The specification describes a preferred embodiment consisting of a dome-shaped theater into which images are projected for viewing by an audience, and notes that the projection of images could be replaced by holography or any other type of presentation.[10] In a preferred embodiment of the main modules described in the patent, these modules are to implemented via software. [11]

The '353 patent also describes sensors in the theater area that detect physical information about audience members and " Stimulus Generators" that analyze that information.[12] The patent states that a system could feed this sensor data into the " behavioral module" of a " virtual actor," which is " likely [t]o be [a] virtual animal[ ] or [a] virtual physical actor[ ] which ha[s]

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behaviors that are easier to simulate than those of humans." [13]

The " behavioral module" of the virtual actor would then calculate the reaction of the actor.[14] One component of the " behavioral module" would be the " behavioral model" of a virtual actor, a set of factors specific to a virtual actor that would mediate its response to the data provided to it by the Stimulus Generator.[15] For example, the specification describes the age of a virtual actor as a possible factor within that actor's behavioral model, and states that " [a]n older animal will more likely be passive with respect to the stimuli of the visitors." [16]

In sum, the system would collect and analyze physical information from visitors, feed that information to virtual actors, the behavioral models of which would mediate a response (or non-response).[17] In this way the system would allow the virtual actors to respond to the physical information collected from viewers in real time.[18]

B. The Parties' Experts[19]

Both parties have offered expert testimony in connection with this motion. Microsoft's expert is Aaron T. Bobick, Ph.D. (" Bobick" ). Bobick received bachelor of science degrees in mathematics and computer science from the Massachusetts Institute of Technology (" MIT" ) in 1981, and a Ph.D. in cognitive science from MIT in 1987. He has been in the academic field since receiving his Ph.D., with stints at MIT and Stanford. Since 2003, he has been employed as full professor at the Georgia Institute of Technology's College of Computing, where he was the founding chair of the School of Interactive Computing. Additionally, from 1993-1996, he served as the Chief Technology Officer of Cybergear, a company that he founded. In connection with Cybergear, Bobick received several patents for an " interactive exercise apparatus."

Over the course of his career, Bobick has published twenty-two articles in peer-refereed journals on topics related to machine perception and virtual reality. He has also received nine grants, as principal investigator, on the same topics. Finally, Bobick has provided expert testimony in eight prior cases, mostly in the field of computer vision.

Virtual's expert is Vyacheslav Zavadsky, Ph.D. (" Zavadsky" ). Zavadsky received a Masters in Computer Science in 1994 from Belarusian State University, and a Ph.D. in the same field from Belarusian State University in 1998. He is currently employed as the Principal of Zavadsky Technologies, where his duties include patent assessment, software project management, and software development. From 2003 to 2011, he worked at UBM TechInsights, where he was engaged in patent analysis

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and reverse engineering. During his tenure at UBM, Zavadsky reviewed hundreds of patents.

Zavadsky is the named inventor on twelve issued United States patents, at least five of which pertain to image processing and computer vision. He has ten additional patents pending.


Indefiniteness is an issue that is amenable to summary judgment.[20] Summary judgment is appropriate " 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." [21] " ‘ An issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. A fact is material if it might affect the outcome of the suit under the governing law.’ " [22] " The moving party bears the burden of establishing the absence of any genuine issue of material fact." [23] " When the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence ... on an essential element of the nonmovant's claim." [24] In turn, to defeat a motion for summary judgment, the non-moving party must raise a genuine issue of material fact. To do so, the non-moving party " ‘ must do more than simply show that there is some metaphysical doubt as to the material facts,’ " [25] and " ‘ may not rely on conclusory allegations or unsubstantiated speculation.’ " [26]

In deciding a motion for summary judgment, a court must " ‘ construe the facts in the light most favorable to the non-moving party and must resolve all ambiguities and draw all reasonable inferences against the movant.’ " [27] However, " ‘ [c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge.’ " [28] " ‘ The role of the court is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried.’ " [29]


" A determination of indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims ...." [30] I will therefore lay out the law of claim construction

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that is applicable to this case prior to stating the law applicable to indefiniteness.

" Analysis of patent infringement starts with ‘ construction’ of the claim, whereby the court establishes the scope and limits of the claim, interprets any technical or other terms whose meaning is at issue, and thereby defines the claim with greater precision than had the patentee." [31] Claim construction is a question of law.[32] Judges construe claims with the goal of " ‘ elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims.’ " [33]

The claim construction inquiry begins from the " objective baseline" of the ordinary and customary meaning that a claim term would have to a person of ordinary skill in the art at the time of the effective filing date of the invention.[34] An accused infringer faces a " heavy presumption" that the ordinary meaning of claim terms applies, and a claim term may not be narrowed merely by pointing out that the preferred embodiment of a patent is narrower than the ordinary meaning of its claim terms.[35]

With this being said, the ordinary and customary meaning of a term to a skilled artisan is only a baseline. A deeper inquiry is needed when a claim term is ambiguous or when " reliance on a term's ‘ ordinary meaning’ does not resolve the parties' dispute." [36] As such, a judge may not leave questions of claim construction to the finder of fact by instructing a jury that an ambiguous or disputed term is to be given its ordinary meaning. [37]

" A person having ordinary skill in the art" is a legal fiction, like tort law's " reasonable person." She is a hypothetical person who knows and understands all of the relevant art within the field of invention and any related technical fields, but is utterly uncreative.[38] To determine how such a hypothetical person would have understood the meaning of a disputed claim term, courts look to publicly available sources, including both intrinsic evidence and extrinsic evidence.[39]

A. Intrinsic Evidence

Because intrinsic evidence provides " a more reliable guide to the meaning of a claim term than [ ] extrinsic

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sources[,]" [40] and because a person having ordinary skill in the art would use it to understand a patent,[41] district courts use the intrinsic record as " the primary tool to supply the context for interpretation of disputed claim terms." [42] The intrinsic record consists of information found within the public record of a patent, such as its specification and prosecution history.[43]

The most important source of intrinsic evidence is the language of the claims, because a patent's claims define the scope of the patentee's right to exclude.[44] Sometimes " the ordinary meaning of claim language as understood by a person of skill in the art" will be so apparent from the claim language itself that no further inquiry is needed.[45] Even if claim language is not self-explanatory, the context in which a claim term is used will often be highly instructive as to its meaning.[46]

The second most important source of intrinsic evidence is provided by the patent's specification,[47] which typically includes: " an abstract of the invention; a description of the invention's background; a summary of the invention; patent drawings; and a detailed description that discusses preferred embodiments of the invention." [48] A patent's specification is " always highly relevant to the claim construction analysis[,]" and therefore " claims must be read in view of the specification ...." [49]

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While it is permissible (and often necessary) to " us[e] the specification to interpret the meaning of a claim[,]" it is generally impermissible to " import[ ] limitations from the specification into the claim." [50] This is so because the words of the claim " define the scope of the right to exclude ...." [51] For the purposes of claim construction, this rule defines the boundary between a patent's claims and its specification.[52] In light of this rule, the specification may be used to limit a claim only if:

(1) [ ] the claim " explicitly recite[s] a term in need of definition" ; or (2)[ ] the specification unambiguously defines a term, i.e., if " a patent applicant has elected to be a lexicographer by providing an explicit ...

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