274 F.3d 1371 (Fed. Cir. 2001), 01-1029, Interactive Pictures v. Infinite Pictures

Docket Nº:01-1029
Citation:274 F.3d 1371
Party Name:INTERACTIVE PICTURES CORP., (formerly known as Omniview, Inc.) Plaintiff-Appellee, v. INFINITE PICTURES, INC., Defendant-Appellant, and BILL TILLMAN, CRAIG JONES, and GARY WALTENBAUGH (doing business as Graphics Effects, also known as Graphics EFX), Defendants.
Case Date:December 20, 2001
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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274 F.3d 1371 (Fed. Cir. 2001)

INTERACTIVE PICTURES CORP., (formerly known as Omniview, Inc.) Plaintiff-Appellee,


INFINITE PICTURES, INC., Defendant-Appellant,


BILL TILLMAN, CRAIG JONES, and GARY WALTENBAUGH (doing business as Graphics Effects, also known as Graphics EFX), Defendants.

No. 01-1029

United States Court of Appeals, Federal Circuit

December 20, 2001

Appealed from: United States District Court for the Eastern District of Tennessee, Judge Leon Jordan

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[Copyrighted Material Omitted]

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Robert F. Altherr, Jr., Banner & Witcoff, LTD, of Washington, DC, argued for plaintiff-appellee. With him on the brief were Nina L. Medlock, and Bradley C. Wright. Of counsel was Thomas H. Jackson, Banner & Witcoff, LTD.

J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for defendant-appellant. With him on the brief was Christine E. Lehman.

Before LOURIE, Circuit Judge, ARCHER, Senior Circuit Judge, and GAJARSA, Circuit Judge.

LOURIE, Circuit Judge.

Infinite Pictures, Inc. appeals from the decision of the United States District Court for the Eastern District of Tennessee denying its various motions following a jury verdict finding Infinite and the other defendants liable for infringement of Interactive Pictures Corp.'s U.S. Patent 5,185,667 under the doctrine of equivalents and awarding $1 million in damages. Because the district court did not err as a matter of law by refusing to preclude infringement by equivalents, and because the jury's finding of equivalence and award of damages were supported by substantial evidence, we affirm.


A. The '667 Patent and its Prosecution History

The '667 patent describes an image viewing system whereby a user can view a specified portion of a hemispherical field of view in corrected perspective. '667 patent, col. 2, ll. 35-60. The image viewing system utilizes, inter alia, a camera equipped with a fisheye lens, an input memory, an image transform processor, and an output. Id. at col. 3, ll. 25-48, Figure 1. In operation, the fisheye lens camera produces a circular image of an entire hemispherical field of view. Id., Abstract. As the hemispherical field of view is mapped into a circle, the fisheye lens introduces distortion - fisheye distortion - such that straight lines appear curved in the circular image. Id. at col. 4, ll. 22-47. The circular image data is stored in the input memory. Id. at col. 3, ll. 25-48. The image transform processor reads the circular image data from the input memory, accepts user input of pan and tilt angles to specify a region of interest in the image, mathematically transforms the image data in that region so as to correct the fisheye distortion, and outputs a perspective corrected view of that region to the system's output. Id. at col. 2, ll. 35-60. The user may also specify desired rotation and magnification of the region of interest. Id. The system performs the mathematical transformations electronically, without moving parts, id. at col. 3, ll. 10-24, preferably at real time rates, id. at col. 4, ll. 44-47.

Claim 1, the only claim at issue, reads as follows:

1. A device for providing perspective corrected views of a selected portion of a hemispherical view in a desired format that utilizes no moving parts, which comprises:

a camera imaging system for receiving optical images and for producing output signals corresponding to said optical images;

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fisheye lens means attached to said camera imaging system for producing said optical images, throughout said hemispherical field-of-view, for optical conveyance to said camera imaging system;

image capture means for receiving said output signals from said camera imaging system and for digitizing said output signals from said camera imaging system;

input image memory means for receiving said digitized signals;

image transform processor means for processing said digitized signals in said input image memory means according to selected viewing angles and magnification, and for producing output transform calculation signals according to a combination of said digitized signals, said selected viewing angles and said selected magnification;

output image memory means for receiving said output signals from said image transform processor means;

input means for selecting said viewing angles and magnification;

microprocessor means for receiving said selected viewing angles and magnification from said input means and for converting said selected viewing angles and magnification for input to said image transform processor means to control said processing of said transform processor means; and

output means connected to said output image memory means for recording said perspective corrected view according to said selected viewing angles and magnification.

Id. at col. 8, ll. 27-66 (emphasis added).

Claim 1 was initially rejected by an Examiner at the U.S. Patent and Trademark Office under, inter alia, 35 U.S.C. § 103, as being obvious over U.S. Patent 5,067,019, issued to Juday et al., in light of U.S. Patent 5,068,735, issued to Tuchiya et al. The applicant challenged the propriety of the rejection by noting several deficiencies in the Juday reference vis-à-vis claim 1 and disputing the relevance of Tuchiya. Additionally, the applicant amended claim 1 in several ways, including inserting the words "transform calculation" to the section reciting the "image transform processor means," so that "output signals" became "output transform calculation signals." That change was made without any explanation. After receipt of the applicant's claim amendments and arguments, the Examiner allowed claim 1 without stating in the record any reasons for the allowance.

B. The Accused Product

Infinite makes and markets a software package known as the "SmoothMove(r) Panorama Web Builder." The product has two components: a "PhotoSeamer" program and a "Viewer" program. The PhotoSeamer is designed to accept a set of three images from a 180° fisheye lens camera or other sources, align and seam the images together into a 360° panorama, and save the panorama image in an equirectangular format (a ".pan" file). The collection and preparation of an equirectangular panorama file is an "off-line" operation, meaning that it cannot be accomplished in real time with fast changing images, such as motion video. Next, the Viewer reads the equirectangular panorama file and displays a portion of the image, as determined by the user's input of "navigation controls" (e.g., left/right, up/down, and zoom in/out) in a "SmoothMove(r) Pan" window. Infinite Pictures, SmoothMove(r) Panorama Web Builder Developer Manual

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24, version 2 (1996). The Viewer reacts in real time to the user's input, producing the selected image without fisheye distortion.

C. The District Court Proceedings

Interactive brought suit against Infinite alleging that a computer equipped with a fisheye camera and executing the SmoothMove(r) software infringed the '667 patent. Interactive conceded that such a computer did not literally infringe the patent because SmoothMove's(r) equirectangular panorama file was different from the claimed "digitized signals" input to the "image transform processor means." However, Interactive presented a theory of infringement based on the doctrine of equivalents, alleging that SmoothMove's(r) equirectangular panorama file, though not an image obtained directly from a fisheye lens camera, was substantially similar to it. The case went to trial before a jury on the issues of infringement under the doctrine of equivalents, validity, and damages. The jury returned a verdict finding claims 1-8 infringed and not invalid, and awarded Interactive $1 million in damages based on evidence of a reasonable royalty on Infinite's sales determined in a hypothetical negotiation between Interactive and Infinite.

The parties also submitted to the jury the question whether a hypothetical version of claim 1 would ensnare the prior art. The hypothetical claim differed from claim 1 in that the term "said digitized signal" was replaced by "an equirectangular panorama file," as Infinite argued that the hypothetical claim would be unpatentable over certain prior art, but the jury determined that hypothetical claim 1 would not ensnare that prior art.

Following the trial, Infinite made a number of motions, including: (1) a motion for judgment based on the defense of prosecution history estoppel; (2) a motion for judgment of noninfringement under the doctrine of equivalents as a matter of law ("JMOL") on the grounds that SmoothMove(r) lacks an equivalent to the structure corresponding to a means-plus-function limitation and that there was a lack of substantial evidence to support the verdict of equivalence; and (3) a motion to set aside the jury's damage award in favor of a remittitur or new trial on the issue of damages. The district court denied all three motions. In deciding the prosecution history estoppel issue, the district judge performed a "flexible bar" analysis, Interactive Pictures, Corp. v. Infinite Pictures, Inc., No. 3:96-CV-849, slip op. at 4-10 (E.D. Tenn. Mar. 31, 1999), as this court had not yet issued its decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed. Cir. 2000) (en banc), cert. granted, 69 U.S.L.W. 3779 (U.S. June 18, 2001) (No. 00-1543), which discarded that approach in favor of an absolute bar, id. at 563-64, 56 USPQ2d at 1868.

Infinite appeals from the judgment of the district court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).


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