In March, RealD initiated a lawsuit against Volfoni and MasterImage for infringement of patents on its XL 3D light doubler. Not much has been heard about it since, until this month, when Volfoni announced that it settled with RealD. Volfoni’s press release claimed no wrong-doing, and prompted an edgy press release from RealD in response. The public spat offered a delightful glimpse of what’s going on behind-the-scenes.
Light doubler technology is based on the well-known property of light in which light waves travel in more than one plane. Un-polarized light can be thought of having half of its energy in one plane and the other half in a perpendicular plane. When using polarized light to display 3D images, one plane of light carries the left eye images, and the other plane of light carries the right eye images. When filtering the light to obtain the correct polarization for, say, a left image, one-half of the light energy is thrown away. Light doubler technology captures the discarded light, rotates the discarded light to the desired plane, and then uses this recycled light to simultaneously display the left eye or right eye image. The additional illumination achieved earns the name “light doubler.”
RealD did not invent the idea of capturing and re-purposing the unused plane of light. There are numerous citations going back to the 1980’s where the concept of recycling the unused plane of light is used to enhance the efficiency of display technologies. More than one expert in the field pointed this out when RealD obtained its first patent for its XL technology, stating it doesn’t meet the novelty test necessary to qualify for a patent. Interestingly, it appears that the rest of the world agrees to some degree. RealD’s primary US patent for its light doubler technology, US patent 7857455, and indeed, none of RealD’s US patents for this technology, have yet been accepted anywhere else in the world. This gave reason for Volfoni to boldly state in its press release that “…RealD has no corresponding international patents for the U.S. patents at issue in the lawsuit.”
RealD’s reaction to Volfoni press release was understandably not gracious. The company immediately issuing a counter-release stating “RealD maintains an extensive patent portfolio connected to its XL Cinema System product line in numerous international markets…” Technically, RealD’s statement is true. RealD does have patents in international markets “connected” to its XL product line. But this doesn’t negate Volfoni’s assertion that RealD’s core patent claims for XL have not been accepted in any market outside of the US.
While the actions of patent offices are available to the public, the European Patent Office requires a fee to view its documents. But the office actions of the World International Property Organization, WIPO are freely available to the public. WIPO is a clearing house for worldwide patent applications, having 148 member states, including the United States. WIPO does not have the right to grant a patent, but by treaty it can establish a common date of patent application in 148 markets, which can be quite valuable to an inventor, and it can conduct a search to evaluate the likelihood of the patent being granted in member markets.
WIPO’s search results pertaining to US7857455 can be viewed here. (Be sure to click on the Documents tab). The search results on the original US patent claims, titled “Written Opinion of the International Search Authority,” is dated 18 April, 2009, where prior art is listed that invalidates each claim of the patent. According to the public record, RealD then modified its claims, and a follow-up opinion dated 29 May, 2009, suggests that the modified claim proposed by RealD does not infringe prior art. (The modifications narrow the claims to 3D applications.) Similar office actions are documented online for RealD’s other patents regarding its XL technology. However, the office actions of WIPO only set the stage for negotiations in regional patent offices, such as the European Patent Office.
One reason why WIPO would be considerably more strict than the US when reviewing patent applications is the “doctrine of equivalents.” The “doctrine of equivalents” allows patent infringement to be prosecuted against applications related to, but not specifically identified, by the claims of a patent. This doctrine is interpreted differently in different countries. Most notably, Germany is said to be quite liberal when interpreting patent infringement under this doctrine. The liberal interpretation of patent infringement is reason for applying conservative rules when accepting new patent applications. If patents can be liberally interpreted when it comes to infringement, then one had better be careful about what one allows through the gate.
What’s clear is that RealD’s US patents will not be granted in other countries as originally granted in the US. To pursue its patents in other countries, RealD must narrow, or further limit, its claims. When additional limitations are introduced, there is substantial risk that the patent will not protect the patent applicant from unwanted competition. As RealD is forced by other countries to introduce further limitations, the protection from competition sought by its patents could significantly erode.
Volfoni’s press release may have been over-zealous, but it does underscore RealD’s patent problem. So far, it appears that no one has challenged RealD’s US patent. Not surprisingly, it appears that Volfoni won’t, as part of the deal struck between it and RealD. Still, this should be uncomfortable ground for RealD, as the validity of its patents are what support its licensing fees, and indeed, its business model. No doubt there will be more to come.