Last month marked the first anniversary of RealD’s polarization light-doubler patent infringement lawsuit against MasterImage. RealD served both MasterImage and Volfoni at CinemaCon 2014. Volfoni since pulled its light-doubler from the US market, presumably because it hasn’t the funds to fight RealD. But not so for MasterImage. In the year since, the fight has heated up. While a decision in the US is still pending, MasterImage did succeed in invalidating RealD’s utility model patent in Russia this month.
The sequence of activities regarding this case can be mind numbing. RealD filed in Federal Court against MasterImage in March 2014. In turn, MasterImage filed an inter partes review (IPR) with the US Patent and Trademark Office (USPTO) against RealD’s light doubling patents in October 2014. An IPR is an action to invalidate all or part of a patent. Not missing a beat, RealD, in December 2014, filed a complaint with the US International Trade Commission (ITC) to block MasterImage’s importation of its light-doubling products. Following its action, RealD’s patent infringement lawsuit against MasterImage was placed on hold by the courts until the ITC case is decided.
A milestone was reached this month. According to the USPTO website, MasterImage’s challenges against RealD’s US patent 8220934, Polarization conversion systems for stereoscopic projection, and US7857455, Combining P and S rays for bright stereoscopic projection were accepted for trial. This is not a proclamation of patent invalidation. But the significance of this step is summarized on the USPTO website: “An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.” (See http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/inter-partes-disputes). It could be 6 months to a year before the cases are decided.
Interestingly, the ‘934 patent was filed by Colorlink with priority date Sep 29, 2006, and the ‘455 patent filed by RealD with priority date Oct 18, 2006. A little arithmetic says that Colorlink beat RealD to the punch with its light-doubling patent by nearly 3 weeks. As an exercise for the reader, one might ponder the events that led to RealD’s acquisition of Colorlink six months later in March 2007.
RealD is not without its wins. In November 2014, the European Patent Office (EPO) granted RealD patent EP2067066B1, a version of the US ‘934 patent, with modifications required by the EPO. According to the EPO website, MasterImage challenged the patent during its prosecution. So far, no effort has been made by RealD to test the new patent in court, which would determine whether the EPO modifications are of benefit to MasterImage.