Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 1 of 11 PageID #: 1451
`
`
`
`Exhibit C
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 2 of 11 PageID #: 1452
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 14
`
`
` Entered: Sept. 24, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
` YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`_______________
`
`Case IPR2013-00326 (SCM)
`Patent 6,665,003 B1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 3 of 11 PageID #: 1453
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`
`I. INTRODUCTION
`Petitioner, Sony Corporation, filed a Petition requesting an inter partes
`review of claims 4, 5, and 34 of Patent No. U.S. 6,665,003 B1. Paper 10 (“Pet.”).
`In response, Patent Owner, Yissum Research Development Company of the
`Hebrew University of Jerusalem, filed a Patent Owner Preliminary Response.
`Paper 13 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a):
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`Pursuant to the defined threshold under 35 U.S.C. § 314(a), the Board
`institutes an inter partes review of claims 4, 5, and 34 of the ’003 Patent.
`
`Petitioner separately has moved to join this proceeding with the IPR2013-
`00218 proceeding. Paper 4. In a separate decision entered today, we grant
`Petitioner’s motion and join this proceeding with the ’218 proceeding.
`A. Related Proceedings
`The ’003 Patent and a related patent, Patent No. US 7,477,284 B2, are
`involved in litigation in the District Court of Delaware. See Pet. (citing
`HumanEyes Technologies Ltd. v. Sony Electronics Inc. et al., 1-12-cv-00398 (D.
`Del. March 29, 2013)). Petitioner describes the Delaware litigation as an
`infringement action currently based on at least claims 1-5, 22, and 34 of the ’003
`Patent. Paper 10, 2-3. In addition to the ’218 proceeding, related inter partes
`review proceedings before the Patent Trial and Appeal Board involving the same
`parties and the related patent include IPR2013-00219 and IPR2013-00327.
`
`
`
`2
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 4 of 11 PageID #: 1454
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`
`B. The ’003 Patent
`The ’003 Patent describes generating and displaying stereoscopic panoramic
`images by using a rotating camera. See Ex. 1101, Abstract, Fig. 2. The ’003
`Patent is described more fully in the IPR2013-00218 Decision to Institute, Paper
`16 (“’218 Decision”), in which the Board institutes inter partes review for claims
`1-3 and 22 in the ’003 Patent. For purposes of the instant Decision to Institute
`(“Decision”), we adopt and rely upon the ’218 Decision, including the description
`of the ’003 Patent in the ’218 Decision at 3-5.
`C. Claims
`Unchallenged independent claim 1, challenged claims 4 and 5 dependent
`therefrom, and challenged independent claim 34, follow:
`
`1. A system for generating a stereoscopic panoramic mosaic
`image pair comprising:
`A. a strip generator module configured to generate two
`series of image strips, all of said image strips in each
`series comprising strips of a series of images of a scene
`as would be recorded by a camera from a respective
`series of positions relative to the scene, the image strips
`of the respective series representing strips of the
`respective images displaced from one another by at least
`one selected displacement; and
`B. a mosaic image generator module configured to
`mosaic the respective series of images strips together
`thereby to construct two panoramic mosaic images, the
`panoramic mosaic images comprising the stereoscopic
`panoramic mosaic image pair providing a stereoscopic
`image of the scene as recorded over the path.
`
`
`
`4. A system as defined in claim 1 in which the series of
`
`positions define a translation relative to the scene.
`
`5. A system as defined in claim 1 in which the series of
`
`positions define a change in angular orientation relative to the scene.
`3
`
`
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 5 of 11 PageID #: 1455
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`
`
`
`34. A method of generating a stereoscopic panoramic mosaic
`
`image pair comprising the steps of:
`A. a strip generation step of generating two series of
`image strips, all of said image strips in each series
`comprising strips of a series of images of a scene as
`would be recorded by a camera from a respective series
`of positions relative to the scene, the image strips of the
`respective series representing strips of the respective
`images displaced from one another by at least one
`selected displacement; and
`B. a mosaic image generation step of mosaicing the
`respective series of images strips together thereby to
`construct two panoramic mosaic images, the panoramic
`mosaic images comprising the stereoscopic panoramic
`mosaic image pair providing a stereoscopic image of the
`scene as recorded over the path.
`
`
`
`D. References Relied Upon
`Petitioner relies upon the following references:
`
`Inoue, JP 8-159762 (June 21, 1996) (Ex. 1107, “Asahi”);1
`
`Hofmann, A Digital Three Line Stereo Scanner System, ISPRS International
`Archives of Photogrammetry and Remote Sensing, Kyoto, 16th Congress, V. 27,
`Part B2, Com. II, 206-13 (1988) (Ex. 1108, “Hofmann”);
`
`Ishiguro et al., Acquiring Omnidirectional Range Information, Systems and
`Computers in Japan, V. 23, No. 4, 47-56 (1992) (Ex. 1105, “Ishiguro”); and
`
`Kawakita et al., Generation of Panoramic Stereo Images from Monocular
`Moving Images, SIG-CyberSpace ,Virtual Reality Society of Japan (VRSJ)
`Research Report, V. 2, No. 1, ISSN 1343-0572, VCR 97-12, pp. 13-19
`(Nov. 27, 1997) (Ex. 1104, “Kawakita”).
`
`
`1 Unless otherwise noted, all references herein refer to a certified English
`translation or to the original English version provided by Petitioner.
`4
`
`
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 6 of 11 PageID #: 1456
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`
`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
`§ 102:
`Claims 4, 5, and 34 as anticipated under 35 U.S.C. § 102(a) by Kawakita;
`Claims 4, 5, and 34 as anticipated under 35 U.S.C. § 102(b) by Ishiguro;
`Claims 4, 5, and 34 as anticipated under 35 U.S.C. § 102(b) by Asahi; and
`Claims 4, 5, and 34 as anticipated under 35 U.S.C. § 102(b) by Hofmann.
`Pet. 12.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77
`Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim Construction).
`Petitioner and Patent Owner propose several definitions for certain claim
`terms. For purposes of this Decision, the Board adopts and relies upon the claim
`constructions outlined in the ’218 Decision at 7-12.
` B. Asserted Grounds of Unpatentability
`I. Kawakita – Anticipation, Claims 4, 5, and 34
`A. Public Dissemination
`Patent Owner challenges the prior art status of Kawakita, Ex. 1104, in
`particular, its public accessibility prior to the effective filing date of the ’003
`Patent. See Prelim. Resp. 17-18. Petitioner presents declaration evidence that the
`original Japanese version of Kawakita was published at a conference and available
`thereafter, with an English abstract and title, as part of a five-article booklet,
`entitled “Virtual Reality Society [(“VRS”)] of Japan Research Report.” See Pet.
`
`
`
`5
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 7 of 11 PageID #: 1457
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`42-44.
`For purposes of this Decision, the Board adopts and relies upon the analysis
`of this same public accessibility issue, which is discussed in the ’218 Decision at
`12-17. Based on the foregoing discussion, Petitioner has established a reasonable
`likelihood of prevailing on the issue of whether the Kawakita reference was
`publically accessible prior to the effective date of the invention.
`B. Claims 4, 5, and 34
`Petitioner contends that Kawakita “discloses a system that uses the same
`technique for generating a stereoscopic panoramic mosaic image pair as the
`technique described in the ’003 Patent.” Pet. 18. Petitioner also reads the elements
`of claims 4, 5, and 34 onto Kawakita. Pet. 19-23. In response, Patent Owner
`focuses on claim 1, a subject of the ’218 Decision, and which Patent Owner
`correctly notes is similar to claim 34 at issue here. Prelim. Resp. 23, 23-28. In
`response to the parties, the Board hereby adopts and relies upon the discussion of
`the anticipation of claims 1 and 2 by Kawakita, which appears in the ’218 Decision
`at 17-22.
`Patent Owner does not present separate arguments to distinguish claims 4, 5
`and 34 over Kawakita. In other words, similar to arguments presented in the ’218
`proceeding, Patent Owner’s arguments here are directed solely to alleged
`deficiencies in Kawakita with respect to independent claim 1, and Patent Owner
`does not contest the specific limitations in challenged claims 4, 5, and 34 with
`separate arguments. As the two preliminary responses show, Patent Owner makes
`the same or similar arguments here to those made in the ’218 proceeding.
`Petitioner shows persuasively that Kawakita discloses the additional recited
`limitations in claims 4 and 5, which are similar to those recited in claim 2, and the
`limitations in claim 34, which are similar to those recited in claim 1. See Pet. 18-
`
`
`
`6
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 8 of 11 PageID #: 1458
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`23.
`
`Similar to claim 2, claims 4 and 5 read on Kawakita’s rotating camera,
`because the different positions in the rotation define a translation and a change in
`angular orientation relative to a scene, as claims 4 and 5 require. See Pet. 21-22;
`’218 Dec. 22 (Petitioner explains that claim 2 reads on Kawakita’s rotating camera,
`because the different rotating camera positions “correspond[] to a curved arc,” as
`claim 2 recites.). Pursuant to the foregoing discussion, Petitioner establishes a
`reasonable likelihood of prevailing on the ground of unpatentability of claims 4, 5,
`and 34 as anticipated by Kawakita.
` 2. Ishiguro – Anticipation, Claims 4, 5, and 34
`Ishiguro discloses an “[o]mnidirectional stereo method,” Ex. 1105, 49, to
`create “[t]wo omnidirectional views for stereo method,” id. at Fig. 5, having a
`“panoramic representation,” id. at 47. Similar to the method disclosed in the ’003
`Patent, Ishiguro’s system uses a rotating camera to capture images through slits
`over a series of positions. Id. at 51, 53, Figs. 4, 5, and 6; ’218 Dec. 22-23.
`Focusing on independent claim 1, a primary subject of the ’218 Decision as
`noted above, Patent Owner argues that Ishiguro does not disclose “the claimed
`stereoscopic panoramic mosaic image pair that can be displayed to or viewed
`simultaneously by a person to provide a perception of depth.” Prelim. Resp. 31.
`Patent Owner makes additional similar arguments to those made in its preliminary
`response in the ’218 proceeding. In response to the parties, the Board hereby
`adopts and relies upon the discussion of the anticipation of claim 1 by Ishiguro,
`which appears in the ’218 Decision at 22-24.
`Patent Owner does not present separate arguments to distinguish claims 4, 5,
`and 34 over Ishiguro. In other words, Patent Owner’s arguments are directed
`solely to alleged deficiencies in Ishiguro with respect to independent claim 1, and
`
`
`
`7
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 9 of 11 PageID #: 1459
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`Patent Owner does not contest the specific limitations in challenged claims 4, 5,
`and 34 with separate arguments. Petitioner shows persuasively that Ishiguro
`discloses the additional recited limitations in claim 4 and 5, which are similar to
`those recited in claim 2, and the limitations in claim 34, which are similar to those
`recited in claim 1. See Pet. 23-28. Pursuant to the foregoing discussion, Petitioner
`establishes a reasonable likelihood of prevailing on the ground of unpatentability
`of claims 4, 5, and 34 as anticipated by Ishiguro.
`3. Asahi – Anticipation, Claims 4, 5, and 34
`Asahi discloses that “stereoscopic viewing is possible using this forward
`view image, this nadir view image, and this rearward view image.” Ex. 1107, ¶ 35.
`Asahi states that the workstation “can obtain image data . . . after going through the
`various processing . . . [to generate] continuous mosaic image formation.” Ex.
`1107, ¶ 28. Relying on these and similar disclosures, Petitioner explains how
`claims 4, 5, and 34 read on Asahi’s aerial camera system.
`Patent Owner focuses on claim 1 and argues that Asahi does not disclose or
`suggest “a stereoscopic image that can be viewed by the eyes of a person to
`provide a perception of depth.” Prelim. Resp. 34. Patent Owner makes similar
`arguments to those made in its preliminary response in the ’218 proceeding. In
`response to the parties, the Board hereby adopts and relies upon the discussion of
`the anticipation of claim 1 by Asahi, which appears in the ’218 Decision at 24-26.
`Patent Owner does not present separate arguments to distinguish claims 4, 5
`and 34 over Asahi. In other words, Patent Owner’s arguments are directed solely
`to alleged deficiencies in Asahi with respect to independent claim 1, and Patent
`Owner does not contest the specific limitations in challenged claims 4, 5, and 34
`with separate arguments. Petitioner shows persuasively that Asahi discloses the
`additional recited limitations in claim 4 and 5, which are similar to those recited in
`
`
`
`8
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 10 of 11 PageID #: 1460
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`claim 2, and the limitations in claim 34, which are similar to those recited in claim
`1. See Pet. 28-35. Pursuant to the foregoing discussion, Petitioner establishes a
`reasonable likelihood of prevailing on the ground of unpatentability of claims 4, 5,
`and 34 as anticipated by Asahi.
`4. Remaining Asserted Grounds of Unpatentability
`
`Petitioner asserts an additional ground of unpatentability, based on
`Hofmann, with respect to claims 4, 5, and 34 as listed in Section I.E., supra. That
`additional ground is denied as redundant in light of the determination that there is a
`reasonable likelihood that the challenged claims are unpatentable based on the
`grounds of unpatentability on which we institute an inter partes review. See
`37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`The Petition demonstrates a reasonable likelihood of prevailing on the
`following grounds of unpatentability: a) anticipation of claims 4, 5, and 34 by
`Kawakita; b) anticipation of claims 4, 5, and 34 by Ishiguro; and c) anticipation of
`claims 4, 5, and 34 by Asahi.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 4, 5, and 34 of the ’003 Patent for the following
`grounds of unpatentability:
`1. Claims 4, 5, and 34 for anticipation by Kawakita;
`2. Claims 4, 5, and 34 for anticipation by Ishiguro; and
`3. Claims 4, 5, and 34 for anticipation by Asahi;
`
`
`
`9
`
`

`
`Case 1:12-cv-00398-GMS Document 42-3 Filed 09/26/13 Page 11 of 11 PageID #: 1461
`Case IPR2013-00326
`Patent 6,665,003 B1
`
`
`FURTHER ORDERED that no other grounds of unpatentability set forth in
`the Petition are authorized for the inter partes review as to claims 4, 5, and 34 of
`the ’003 Patent;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial, which will commence on
`the entry date of this Decision; and
`FURTHER ORDERED that in light of the joinder of this proceeding with
`the IPR2013-00218 proceeding, the Scheduling Order and time for the initial
`conference call set forth in that proceeding shall set forth the schedule and initial
`conference call for the joined proceeding.
`
`For Petitioner:
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`Petitioner-humaneyes@kenyon.com
`whanley@kenyon.com
`mccarniaux@kenyon.com
`
`For Patent Owner:
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`
`
`
`10