Magistrate Judge Burke’s Markman report and recommendation in this case is interesting for a few reasons. Procedurally, it followed argument at two separate Markman hearings, one early in the case before a stay pending IPR, and a second hearing following an IPR decision invalidating all claims at issue in the IPR and addressing only the three dependent claims remaining as valid and at issue in this litigation. Princteon Digital Image Corp. v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB, Report and Recommendation at 1-7 (D. Del. Dec. 2, 2016).
Judge Burke also addressed an indefiniteness argument regarding the claim term “virtual environment,” which was defined in the patent specification as follows: “The terms ‘virtual environment,’ ‘virtual world,’ and ‘virtual reality’ are used interchangeably to describe a computer-simulated environment (intended to be immersive) which includes a graphic display (from a user’s first person perspective, in a form intended to be immersive to the user), and optionally also sounds which simulate environmental sounds.” This definition led to a dispute as to the meaning of “immersive” and whether this term provides sufficient objective boundaries to avoid indefiniteness. Id. at 21. The parties did not dispute that “immersive” was a term of degree, but disputed whether the patent provided a definite “lower boundary of immersiveness.” Id. at 24-26. Judge Burke concluded that the claim was not indefinite, however, because at least four portions of the specification helped to suggest boundaries for the term “immersive.” Id. at 26-32.