       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

     TOMITA TECHNOLOGIES USA, LLC,
TOMITA TECHNOLOGIES INTERNATIONAL, INC.,
            Plaintiffs-Appellants

                           v.

             NINTENDO CO., LTD.,
          NINTENDO OF AMERICA INC.,
               Defendants-Appellees
              ______________________

                      2016-2015
                ______________________

   Appeal from the United States District Court for the
Southern District of New York in No. 1:11-cv-04256-JSR,
Judge Jed S. Rakoff.
                ______________________

               Decided: March 17, 2017
               ______________________

    IAN DIBERNARDO, Stroock & Stroock & Lavan LLP,
New York, NY, argued for plaintiffs-appellants. Also
represented by JOSEPH DIAMANTE, KENNETH STEIN.

    JAMES S. BLANK, Arnold & Porter Kaye Scholer LLP,
New York, NY, argued for defendants-appellees. Also
represented by SCOTT G. LINDVALL; PAUL ISAAC
MARGULIES, Washington, DC.
2                    TOMITA TECHS. USA, LLC   v. NINTENDO CO.



                 ______________________

Before PROST, Chief Judge, BRYSON and WALLACH, Circuit
                        Judges.
WALLACH, Circuit Judge.
     The parties’ patent infringement dispute concerning
the 3DS, a handheld gaming console sold by Appellees
Nintendo Co., Ltd. and Nintendo of America Inc. (togeth-
er, “Nintendo”), returns to this court. Appellants Tomita
Technologies USA, LLC and Tomita Technologies Inter-
national, Inc. (together, “Tomita”) sued Nintendo in the
U.S. District Court for the Southern District of New York
(“District Court”), alleging that the 3DS infringes claim 1
of U.S. Patent No. 7,417,664 (“the ’664 patent”). A jury
found that the 3DS infringes claim 1 of the ’664 patent.
We reversed and remanded that finding because it rested
upon an incorrect construction of “offset presetting
means” in claim 1. See Tomita Techs. USA, LLC v. Nin-
tendo Co. (Tomita I), 594 F. App’x 657, 659–64 (Fed. Cir.
2014). The District Court held a bench trial on remand
and concluded that the 3DS does not infringe “offset
presetting means” in claim 1, as properly construed. See
Tomita Techs. USA, LLC v. Nintendo Co. (Tomita II), 182
F. Supp. 3d 107, 113–18 (S.D.N.Y. 2016).
    Tomita appeals the District Court’s noninfringement
finding. We have subject matter jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.
                      BACKGROUND
    The subject dispute involves technology that incorpo-
rates three-dimensional (i.e., 3D) images, which “typically
[are] captured with two cameras providing slightly differ-
ent images known as stereoscopic images. A viewer
perceives a 3D effect when each eye separately views a
stereoscopic image intended for that eye. The strength of
the 3D effect varies with the viewing conditions.” Tomita
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                 3



I, 594 F. App’x at 659. Because the subject appeal has a
long history involving technical facts, we recount only
those details necessary to dispose of the issues before us.
                    I. The ’664 Patent
     Entitled “Stereoscopic Image Picking Up and Display
System Based Upon Optical Axes Cross-Point Infor-
mation,” the ’664 patent generally discloses “a stereoscop-
ic video image pick-up and display system which is
capable of providing the stereoscopic video image having a
natural stereopsis even if the video image producing
playback conditions are different.” ’664 patent col. 2
l. 65–col. 3 l. 2. Claim 1 recites
   [a] stereoscopic video image pick-up and display
   system comprising:
       a stereoscopic video image pick-up device
       including two video image pick-up means
       for outputting video information from said
       pick-up means;
       a stereoscopic video image display device
       for displaying different video images for
       the eyes of a viewer; and
       a medium for transmitting video image in-
       formation from said stereoscopic video im-
       age pick-up device to said stereoscopic
       video image display device,
       in which said stereoscopic video image
       pick-up device includes cross-point meas-
       uring means for measuring CP infor-
       mation on the cross-point (CP) of optical
       axes of said pick-up means and outputs in-
       formation including the CP information
       and video image information to said medi-
       um; and
4                    TOMITA TECHS. USA, LLC   v. NINTENDO CO.



        in which said stereoscopic video image
        display device includes offset presetting
        means for offsetting and displaying said
        different video images based upon said
        video image information, said cross-point
        information[,] and information on the size
        of the image which is displayed by said
        stereoscopic video image display device.
Id. col. 21 ll. 44–65 (emphases added). “Offset presetting
means” in claim 1, a means-plus-function limitation, 1
means “timing control unit 32, signal switch 40, switch
control unit 41, and synthesis frame memory 50 described
in Figure 3 and column 9 line 44 to column 10 line 29 and
equivalents thereof” in the ’664 patent. Tomita I, 594 F.
App’x at 663 (footnote omitted).
    A means-plus-function limitation must recite a func-
tion and a corresponding structure. See, e.g., Ibormeith


    1    “A means-plus-function limitation contemplated
by 35 U.S.C. § 112, ¶ 6 . . . recites a function to be per-
formed rather than definite structure or materials for
performing that function.” Chiuminatta Concrete Con-
cepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1307
(Fed. Cir. 1998); see 35 U.S.C. § 112, ¶ 6 (2006) (explain-
ing that “[a]n element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts de-
scribed in the specification and equivalents thereof”).
Congress amended § 112 when it passed the Leahy-Smith
America Invents Act, Pub. L. No. 112-29, § 4(c), 125 Stat.
284, 296 (2011), but the amended statute does not apply
here because the application leading to the ’664 patent
was filed before the amended statute’s effective date, id.
§ 4(e), 125 Stat. at 297.
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                   5



IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379
(Fed. Cir. 2013). Only the disputed limitation’s structure
is at issue. Here, the relevant corresponding structure of
the limitation contains two parts: the timing control unit
32 “performs the ‘offsetting’ portion of the claim function,”
whereas “[t]he ‘displaying’ portion of the claim function is
performed by the switch control unit 41 presetting the
timing of switching of the signal switch 40 for writing of
video data into synthesis frame memory 50.” Tomita I,
594 F. App’x at 663 (internal quotation marks, brackets,
and citation omitted).
                         II. The 3DS
    Although primarily designed to play video games, the
3DS has a camera application and an augmented reality
application. Similar to “offset presetting means” in claim
1 of the ’664 patent, the 3DS produces 3D images in these
applications by capturing and offsetting different images
on a grid with horizontal and vertical axes. See J.A. 5191,
5193–94. Tomita alleges that these applications, de-
scribed in greater detail below, infringe the disputed
limitation.
                  III. Procedural Posture
    The District Court found that the 3DS neither literal-
ly infringes “offset presetting means” in claim 1 of the
’664 patent nor infringes that limitation under the doc-
trine of equivalents. See Tomita II, 182 F. Supp. 3d at
113–18. The District Court’s analysis consisted of two
parts, one that examined the “offsetting” and “displaying”
portions under the function-way-result test and another
that examined those portions under the insubstantial
differences test. See id. Under both tests, the District
Court found that the 3DS and the disputed limitation do
not possess equivalent structures. See id.
6                      TOMITA TECHS. USA, LLC   v. NINTENDO CO.



                         DISCUSSION
                    I. Standard of Review
     “Following a bench trial, we review a district court’s
conclusions of law de novo and its findings of fact for clear
error.” Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1303
(Fed. Cir. 2015) (citation omitted). “Infringement, both
literal and under the doctrine of equivalents, is an issue of
fact . . . .” Roton Barrier, Inc. v. Stanley Works, 79 F.3d
1112, 1125 (Fed. Cir. 1996) (citation omitted). “A factual
finding” of noninfringement “is clearly erroneous if,
despite some supporting evidence, we are left with a
definite and firm conviction that a mistake has been
made.” Allergan, 796 F.3d at 1303 (citations omitted).
    II. The District Court Properly Concluded That the 3DS
          Does Not Infringe Claim 1 of the ’664 Patent
    Tomita contests the District Court’s conclusion that
the 3DS does not infringe literally or under the doctrine of
equivalents the “offset presetting means” limitation in
claim 1 of the ’664 patent. See Appellants’ Br. 44–64.
Tomita alleges that the District Court committed legal
and factual errors in its analysis of the “offsetting” and
“displaying” portions of the corresponding structure in the
disputed limitation. 2 See id. at 44–57 (discussing legal



      2 Tomita raises several arguments in the back-
ground section of its brief, see, e.g., Appellants’ Br. 24
(contesting certain District Court findings), and in foot-
notes, see, e.g., id. at 51 n.22 (contesting other District
Court findings). Tomita has waived those arguments,
though we address some of them for completeness. See In
re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012)
(holding that a party waives an argument that it raises in
the background section of its brief, but not in the argu-
ment section); SmithKline Beecham Corp. v. Apotex Corp.,
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                 7



errors), 58–64 (discussing factual errors). After setting
forth the applicable legal framework, we address Tomita’s
arguments on a portion-by-portion basis.
                   A. Legal Framework
    “To prove infringement, a [party] must prove the [lit-
eral] presence of each and every claim element or its
equivalent” in the accused product. Star Sci., Inc. v. R.J.
Reynolds Tobacco Co., 655 F.3d 1364, 1378 (Fed. Cir.
2011) (citation omitted).     “Literal infringement of a
means-plus-function limitation requires that the relevant
structure in the accused device [(1)] perform the identical
function recited in the claim and [(2)] be identical or
equivalent to the corresponding structure in the specifica-
tion.” Gen. Protecht Grp., Inc. v. Int’l Trade Comm’n, 619
F.3d 1303, 1312 (Fed. Cir. 2010) (emphasis added) (inter-
nal quotation marks and citation omitted). Because the
disputed limitation and the 3DS share the same function,
the instant appeal concerns only whether the disputed
limitation and the 3DS contain equivalent structures.
The Supreme Court has described the test for structural
equivalence in the means-plus-function context as “an
application of the doctrine of equivalents in a restrictive
role.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 28 (1997). Thus, literal infringement and
infringement under the doctrine of equivalents turn on a
single question: whether structural equivalency exists
between the disputed limitation and the accused product.
See id.
    We apply “two articulations of the test for equiva-
lence,” the function-way-result test and the insubstantial
difference test. Voda v. Cordis Corp., 536 F.3d 1311, 1326




439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[A]rguments raised
in footnotes are not preserved.”).
8                     TOMITA TECHS. USA, LLC   v. NINTENDO CO.



(Fed. Cir. 2008). We describe these tests in greater detail
below.
    B. The ’664 Patent and the 3DS Do Not Possess Equiva-
                  lent “Offsetting” Structures
    Tomita contests the District Court’s finding that “off-
set presetting means” in claim 1 of the ’664 patent and
the 3DS do not possess equivalent offsetting structures.
Appellants’ Br. 44–52. In so doing, Tomita challenges the
District Court’s findings under both the function-way-
result test and the insubstantial differences test. See id.
We address Tomita’s arguments on a test-by-test basis.
              1. The Function-Way-Result Test
    The function-way-result test provides that “an ele-
ment in the accused device is equivalent to a claim limita-
tion if it performs substantially the same function in
substantially the same way to obtain substantially the
same result.” Voda, 536 F.3d at 1326 (internal quotation
marks and citation omitted). Because the parties do not
dispute that the claim limitation and accused device share
the same function, our analysis focuses on the “way” and
“result” prongs of the test. In assessing each prong, we
must determine whether the way the accused product
performs the function or the result thereof is “substantial-
ly different” from the way or result of the subject patent.
Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267
(Fed. Cir. 1999).
    The District Court found “that Tomita fails both the
way and result prongs of the test.” Tomita II, 182 F.
Supp. 3d at 115. With respect to the way prong, the
District Court identified the collective effect of three
aspects of the 3DS that set its ways apart from the way
described in the disputed limitation:
      First, [the 3DS’s image] . . . transformations can
      [a]ffect multiple adjustments to an image simul-
      taneously—for instance, vertical translations as
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                    9



    well as horizontal translations—while the ’664
    [patent’s] relative timing offset is limited to
    [a]ffecting horizontal translations. Second, [the
    3DS’s ability to] implement[] adjustments in soft-
    ware rather than hardware provides more flexibil-
    ity, because software can be updated and the
    [3DS’s graphics processing unit] performs other
    functions related to gaming. Third, [the 3DS’s
    ability to] render[] both images [used to create the
    3D effect] allows for camera calibration to correct
    camera misalignment.
Id. (internal citations omitted). The District Court also
found another “individual difference that is substantial on
its own.” Id. According to the District Court, the disput-
ed limitation offsets certain images only by adding a
single value along the horizontal axis, whereas “the 3DS’s
[image] transformation[s] . . . also accomplish rotations
and scalings,” thus demonstrating that the 3DS considers
other      factors    that   cause   its   “transformation[s
to] . . . operate” in ways “substantially different” from the
disputed limitation. Id. (citation omitted).
     Turning to the result prong, the District Court con-
cluded that the disputed limitation and the 3DS yield
substantially different results. The District Court found
that “[t]he result of the structure in the ’664 patent is
pixel data stored in frame memory . . . [,] whereas the
3DS result is an image displayed on an LCD screen.” Id.
The District Court also found that “the ’664 patent creates
and stores a single, stereoscopic image[] before displaying
it,” whereas the 3DS does not. Id. at 116 (citation omit-
ted).
    Tomita does not challenge the District Court’s factual
findings; instead, it asserts various legal errors, none of
which are persuasive. First, Tomita contends that the
District Court improperly applied the function-way-result
test because it is “[i]rrelevant.” Appellants’ Br. 29; see id.
10                   TOMITA TECHS. USA, LLC   v. NINTENDO CO.



at 30. Although the Supreme Court has acknowledged
that the test “often provides a poor framework for analyz-
ing” non-mechanical products or processes, Warner-
Jenkinson, 520 U.S. at 39–40, it has never disavowed the
application of that test under particular circumstances
and has left it to our court to decide the test’s application
in future cases, id. at 40. Indeed, we have applied the test
to patents covering products and processes similar to the
’664 patent. See, e.g., Brilliant Instruments, Inc. v.
GuideTech, LLC, 707 F.3d 1342, 1346–49 (Fed. Cir. 2013)
(analyzing a patent that discloses circuits that measure
the timing errors of digital signals in high speed micro-
processors).
     Second, Tomita avers that the District Court “flipped
[the] equivalence analysis on its head” in the function-
way-result test by “evaluating equivalence in the context
of the accused device,” “rather than evaluating equiva-
lence in the context of the invention.” Appellants’ Br. 25
(citation omitted). However, evaluating whether the
accused product possesses something of significance that
is not found in the corresponding structure of the subject
patent is precisely what the District Court was required
to assess. See, e.g., Gemstar-TV Guide Int’l, Inc. v. Int’l
Trade Comm’n, 383 F.3d 1352, 1363 (Fed. Cir. 2004)
(holding that an accused product did not infringe because
it “relied on a different technology that could produce
results unattainable by” the corresponding structure in
the subject patent).
    Third, Tomita contends that the District Court found
under the way prong “that software implementation
essentially could never be equivalent to a hardware
implementation” and that such a finding conflicts with
our decision in Overhead Door Corp. v. Chamberlain
Group, Inc., 194 F.3d 1261 (Fed. Cir. 1999). Appellants’
Br. 32; see id. at 39–41. In support of its argument,
Tomita quotes the following passage from Overhead Door:
“it is a fundamental and well understood tenet of the
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                  11



computing art that any software process can be trans-
formed into an equivalent hardware process, and any
hardware process can be transformed into an equivalent
software process.” Id. at 20–21 (quoting 194 F.3d at
1269). Although we found in Overhead Door that the
expert’s testimony precluded summary judgment of non-
infringement, we did not hold that a software implemen-
tation of a particular function is invariably equivalent to a
hardware implementation of the same function. See 194
F.3d at 1269–71. The District Court therefore did not err
in declining to rely upon the quoted passage from Over-
head Door.
           2. The Insubstantial Differences Test
    Under the insubstantial differences test, “an equiva-
lent results from an insubstantial change which adds
nothing of significance to the structure, material[,] or acts
disclosed in the” relevant patent. Valmont Indus., Inc. v.
Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993).
The District Court found substantial differences between
the offsetting structure in the 3DS and in the “offset
presetting means” limitation in claim 1 of the ’664 patent.
The District Court found that “the hardware[-]based
timing mechanism of the ’664 patent cannot provide the
same functionality as the more flexible software-based
transformation[s] . . . in the 3DS, which can [a]ffect”
several different image transformations at the same time.
Tomita II, 182 F. Supp. 3d at 117 (citations omitted). The
District Court also found that the 3DS uses transfor-
mations to render new images, effectively changing the
location of all the images’ pixels along both the horizontal
and vertical axes of a grid, whereas the ’664 patent only
offsets a single image along the horizontal axis. See id.
    Tomita does not contest the District Court’s factual
findings; instead, it avers that the District Court “erred as
a matter of law in relying on the 3DS’s camera calibration
feature” in its analysis, “which is unrelated to the func-
12                   TOMITA TECHS. USA, LLC   v. NINTENDO CO.



tion of the offset presetting means.” Appellants’ Br. 49.
Tomita predicates its argument on the District Court’s
statement that “[a] person of ordinary skill in the art
would consider the[] differences to add something of
significance to the ’664 patent’s offsetting structure,
including because they allow the 3DS to correct for camera
calibration.” Tomita II, 182 F. Supp. 3d at 117 (emphasis
added) (citation omitted).
     The District Court’s opinion belies Tomita’s argument.
None of the District Court’s substantial differences find-
ings rely upon camera calibration; instead, those findings
rely upon differences in software and hardware, as well as
image transformations. See id. Although the District
Court found that these differences result in significant
additions to the 3DS, like camera calibration, that does
not mean that the District Court equated the results of
the substantial differences with the differences them-
selves. Even if the District Court improperly considered
camera calibration, it nonetheless found that the struc-
ture that performs offsetting in the 3DS is substantially
different from the structure in the disputed limitation, see
id., and Tomita has not presented any evidence showing
why these structures are not substantially different, see
generally Appellants’ Br.
    Tomita also avers that the District Court “erred as a
matter of law in failing to evaluate equivalence for the
3DS’s mode of operation in which images are displayed
from an SD card” because “a product that infringes a
patent only part of the time, or in certain modes of opera-
tion, is still infringing.” Id. at 51 (citation omitted).
According to Tomita, the District Court “evaluated equiv-
alence only for the 3DS’s mode of operation in which it
performs” multiple image transformations at the same
time and corrects for camera calibration. Id. at 51–52.
Even if Tomita is correct that the District Court evaluated
equivalence only for one 3DS mode of operation, that does
not change the fact that the District Court found several
TOMITA TECHS. USA, LLC   v. NINTENDO CO.                  13



other substantial differences between the ’664 patent and
the 3DS, see Tomita II, 182 F. Supp. 3d at 116–18, such
that the District Court properly found no infringement.
          3. Tomita’s Remaining Arguments Fail
    Tomita raises additional arguments that we find un-
persuasive. Tomita alleges that the District Court “im-
properly    merge[d]”    the    function-way-result    and
insubstantial differences tests. Appellants’ Br. 45. To-
mita bases its argument on the District Court’s statement
that “if two structures known to perform the same func-
tion accomplish it significantly differently, they are not
interchangeable.” Id. at 46–47 (quoting Tomita II, 182 F.
Supp. 3d at 117 (emphasis added)).
     The District Court’s opinion does not support Tomita’s
argument. The quoted passage appears in the portion of
the District Court’s opinion analyzing the results of the
insubstantial differences test and, in particular, address-
ing the known interchangeability of certain techniques.
Tomita II, 182 F. Supp. 3d at 117. The District Court
neither stated that a “significantly differently” test con-
trolled its inquiry, nor repeated “significantly differently”
in its analysis. See id. at 113–18. “We will not find legal
error based upon an isolated statement stripped from its
context.” VirnetX Inc. v. Apple Inc., 665 F. App’x 880, 886
(Fed. Cir. 2016).
    To the extent that Tomita suggests that the District
Court was required to examine evidence on known inter-
changeability, see Appellants’ Br. 44–49, that position has
no support in the law. The Supreme Court has stated
that
    the particular linguistic framework used is less
    important than whether the test is probative of
    the essential inquiry: Does the accused product or
    process contain elements identical or equivalent to
    each claimed element of the patented invention?
14                    TOMITA TECHS. USA, LLC   v. NINTENDO CO.



     Different linguistic frameworks may be more suit-
     able to different cases, depending on their particu-
     lar facts. A focus on individual elements and a
     special vigilance against allowing the concept of
     equivalence to eliminate completely any such ele-
     ments should reduce considerably the imprecision
     of whatever language is used. An analysis of the
     role played by each element in the context of the
     specific patent claim will thus inform the inquiry
     as to whether a substitute element matches the
     function, way, and result of the claimed element,
     or whether the substitute element plays a role
     substantially different from the claimed element.
Warner-Jenkinson, 520 U.S. at 40. The District Court
conducted a comprehensive comparison of the “offsetting”
structures in the 3DS and the ’664 patent and, thus,
examined equivalency at a level that comports with what
precedent demands. See Tomita II, 182 F. Supp. 3d at
117. Therefore, the District Court properly concluded
that the 3DS does not infringe claim 1 of the ’664 patent.
C. The Court Need Not Address Whether the ’664 Patent
and the 3DS Possess Equivalent “Displaying” Structures
    Tomita challenges several aspects of the District
Court’s finding that the 3DS and the disputed limitation
of the ’664 patent do not possess equivalent displaying
structures. See Appellants’ Br. 53–64. However, we need
not address these arguments because Tomita has failed to
demonstrate that the 3DS and the disputed limitation
possess equivalent offsetting structures, and a party will
prevail on infringement only if it establishes the literal
“presence of each and every claim element or its equiva-
lent” in the accused product. Star Sci., 655 F.3d at 1378
(emphasis added) (citation omitted).
TOMITA TECHS. USA, LLC   v. NINTENDO CO.              15



                         CONCLUSION
    We have considered Tomita’s remaining arguments
and find them unpersuasive. Accordingly, the final judg-
ment of the U.S. District Court for the Southern District
of New York is
                         AFFIRMED
