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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`SONY CORPORATION
`Petitioner
`
`v.
`
`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`
`Case IPR2013-00219
`Patent 7,477,284
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`_____________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. §§ 42.107
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`TABLE OF CONTENTS
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`I. Mandatory Notices (37 C.F.R. § 42.8) .............................................................. 5
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`A. Real Party-in-Interest .................................................................................... 5
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`B. Related matters .............................................................................................. 5
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`C. Lead and Back-up Counsel and Service Information ................................... 5
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`II.
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`Introduction ........................................................................................................ 6
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`III. Overview of U.S. Patent No. 7,477,284 ........................................................... 8
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`IV. Claim Construction .........................................................................................12
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`A.
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`imager ..........................................................................................................12
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`B.
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`C.
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`optical image ...............................................................................................13
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`segments and image strips ...........................................................................14
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`D.
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`plurality of segments ...................................................................................16
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`E.
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`F.
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`G.
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`H.
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`series of image strips ...................................................................................16
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`divide each image [of the scene] into a plurality of segments ....................16
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`said strips being displaced from one another .............................................17
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`sense of depth of the scene ..........................................................................17
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`V. The Kawakita Reference is Not a “Printed Publication”, and the
`Corresponding Grounds Should Not Be Adopted ...................................................18
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`In General, Ishiguro and Asahi are not Directed to Displaying Mosaic
`VI.
`Images that Provide a Sense of Depth, and the Corresponding Grounds Should
`Not Be Adopted .......................................................................................................20
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`VII. Additional, Specific Reasons Why the Prior Art Does Not Invalidate the
`Claims, and Why Inter Partes Review Should Not Be Instituted ...........................22
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`A. No Trial Should Be Instituted for Grounds A, B, E, and F .........................23
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`B. No Trial Should Be Instituted for Grounds C and D ..................................29
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`C. No Trial Should Be Instituted for Grounds G, H, I, and J ..........................35
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`D. No Trial Should Be Instituted for Grounds K and L ...................................42
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`VIII. Conclusion ...................................................................................................48
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`Certificate of Service ...............................................................................................50
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`–2–
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`FEDERAL CASES
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`TABLE OF AUTHORITIES
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`In re Bayer,
`568 F.2d 1357 (CCPA 1978) …………………………….……………….19
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`
`In re Cronyn,
`890 F.2d 1158, 1161 (Fed. Cir. 1989) …………………….…….………...19
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`Cordis Corp. v. Boston Scientific Corp.,
`561 F.3d 1319 (CAFC 2009) ……………………………….……………..18
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`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999)……………………………………………….7
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)(en banc)…………………………………12
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`REGULATORY CASES
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`Scripps Research Institute v. Nemerson,
`72 USPQ2d 1122 (BPAI 2004) ………………………….………….…….11
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`Stampa v. Jackson,
`78 USPQ2d 1567 (BPAI 2005)…………………………………………….7
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`FEDERAL STATUTES
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`35 U.S.C. § 102…….……………………..…………………………..22, 23, 29, 42
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`35 U.S.C. § 103……………….……………………………..……23, 24, 29, 35, 42
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`35 U.S.C. § 314(a) ………………………………………………..………………..6
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`REGULATIONS
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`37 C.F.R. § 42.20 (c) ……………………………………………………………..11
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`37 C.F.R. § 42.104(b)(4) ………………………………..………………………...6
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`OTHER AUTHORITIES
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`M.P.E.P. § 2131 ……………………………………………………………….....22
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`I. Mandatory Notices (37 C.F.R. § 42.8)
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`A. Real Party-in-Interest
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`The real parties-in-interest are Yissum Research Development Company of
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`the Hebrew University of Jerusalem and HumanEyes Technologies Ltd.
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`B. Related matters
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`The following are judicial or administrative matters that would affect, or be
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`affected by a decision in this proceeding:
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`1. IPR2013-00218, Inter partes review of U.S. Patent No. 6,665,003 (the
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`“’003 Patent”).
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`2. HumanEyes Technologies Ltd. V. Sony Electronics Inc. et al., 1-12-
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`cv-00398 (D. Del.).
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`C. Lead and Back-up Counsel and Service Information
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`Lead Counsel
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`Back-up Counsel
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`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
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`(214) 651-5533
`david.mccombs.ipr@haynesboone.com
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`USPTO Customer No. 27683
`USPTO Reg. No. 32,271
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`
`David M. O’Dell
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
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`(972) 739-8635
`david.odell.ipr@haynesboone.com
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`USPTO Customer No. 27683
`USPTO Reg. No. 42,044
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`–5–
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`II.
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`Introduction
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`Patent Owner Yissum Research Development Company of the Hebrew
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`University of Jerusalem (“YRD”) submits the following preliminary response to
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`the Petition filed by Sony Corporation (“Sony”) on March 29, 2013, requesting
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`inter partes review of claims 1, 2, 3, 10, 20, 27, 28, 29, 36, and 37 of U.S. Patent
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`No. 7,477,284 (the “’294 Patent”). YRD respectfully requests that the Board
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`decline to institute inter partes review of the ’284 Patent because Sony has not
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`satisfied Patent Office regulations: “[t]he petition must specify where each element
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`of the claim is found in the prior art patents or printed publications relied upon.” 37
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`C.F.R. § 42.104(b)(4). The Board should not institute a trial because, for each
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`ground of rejection, at least one claim element is missing. Consequently, Sony has
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`not met the basic threshold required by statute: it has not shown that there is a
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`“reasonable likelihood that [it] would prevail with respect to at least [one] of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`As discussed herein, there are claim elements of the pending claims that are
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`missing from the references, and are not addressed by the Sony Petition. For
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`example, the Petition fails to address requirements relating to dividing each image
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`into a plurality of segments and generating a plurality of mosaics of a scene that
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`can be displayed to a person to provide a sense of depth. Instead, Sony’s
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`arguments either gloss over these key claim elements or make bare assertions that
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
`the alleged prior art references do not support.1 For example, the challenge based
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`on the Kawakita reference present in the petition does not disclose such elements
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`(See, e.g., Sony-1004 at 17 noting that in the mosaics “objects appear to overlap or
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`some other fault, making stereoscopic viewing impossible”), while other
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`challenges rely on references that are not even directed to generating mosaics that
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`provide a person with a sense of depth and that still fail to disclose such elements.
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`In accordance with established principles, it is not the job of the Board to fill
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`in the blanks and correct inadequacies in an inter partes review petition. (See, e.g.,
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`in the context of interference practice, S.O. ¶ 121.5.2 (which states that “[t]he
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`Board will not take on the role of advocate for a party, trying to make out a case
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`the party has not adequately stated”); see also Stampa v. Jackson, 78 USPQ2d
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`1567, 1571 (BPAI 2005); DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir.
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`1999) (“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archeologist with the record.”); Spears v. Holland, Interf. No.
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`104,681, Paper 30, p. 15 (BPAI 2002) (“It is not the role of this board to help party
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`1 The present discussion identifies some of the specific claim elements that are
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`missing from the cited art, and therefore, why the Sony Petition does not show a
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`likelihood that it would prevail in an inter partes review. The Patent Owner
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`reserves the right to present additional differences between the cited art and the
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`claims at a later time in the proceeding.
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`IPR2013-00219 (Patent 7,477,284)
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`Spears articulate a difference between [claims]. That is the role of Spears’ counsel
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`as an advocate, not the role of the board as an unbiased and impartial decision
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`maker. Taking sides to aid one party to the detriment of the other is not what we
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`do.”)).
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`The duty to provide an adequate petition falls squarely on the petitioner
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`Sony, and Sony has failed to perform its duty in a way that justifies proceeding to
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`trial. If, nevertheless, a decision is ultimately made to proceed to trial, the Patent
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`Owner requests as a matter of fundamental fairness that the Board provide detailed
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`guidance on how the applied references are being relied upon and where in the
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`references each of the claim elements is alleged to be found.
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`III. Overview of U.S. Patent No. 7,477,2842
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`The’284 Patent is a continuation in part and incorporates by reference,
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`amongst other disclosures, the disclosure of U.S. Patent Application No.
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`09/396,248, filed September 16, 1999, issued as the ’003 Patent.
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`The ’284 Patent, like its parent the ’003 Patent, generally relates to
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`recording, generating, and displaying panoramic images stereoscopically to a
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`2 Claim terms will be briefly discussed in the present section, and a more complete
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`claim construction of the claim terms is provided below in Section IV, Claim
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`Construction.
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`person to provide a sense of depth. Sense of depth (i.e., stereopsis), is the visual
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`perception of differential distances among objects in one’s line of sight. That is,
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`one object in an image will be perceived as being closer to the person viewing the
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`image, as compared to another object in the image. A common day example
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`would be a 3D movie a person would view at a movie theater. (See, e.g., Sony-
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`1001 at 23-24.)
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`For the sake of brevity, the ’284 Patent notes that the image recording
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`arrangement for recording images is similar to the arrangements described in the
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`’003 Patent. (Sony-1001 at 3:26-60; see also 9:16-19.) In that regard, the ’003
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`Patent discloses, in connection with Figs 1A-1B (reproduced below), recording
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`images and segmenting or generating image strips from the recorded images in
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`accordance with the separation and from the perspective of human eyes:
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`It will be apparent from FIG. 1A that each the succession of images as
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`seen by the observer’s two eyes as he or she rotates, can be separated
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`into separate sets of images, with one set of images being associated
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`with each eye…
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`…
`…to facilitate the viewing of a stereoscopic panoramic image of the
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`scene by a viewer, the images as would be received by each of the
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`observer’s eyes can be separately recorded and viewed by, or
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`otherwise displayed to, the respective eyes of the viewer.”
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`(SONY-1002 at 3:8-31; see also 2:55-59 (emphasis added).)
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`It will be appreciated that the left and right panoramic images 31L
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`and 31R conform to what an observer would see through his or her
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`left and right eyes, respectively, as they revolve through the left and
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`right viewing circles 5L and 5R described above in connection with
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`FIG. 1B.
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`(SONY-1002 at 6:42-47 (emphasis added).)
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`Mosaic images conforming to what an observer would see through his or her left
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`and right eyes, generated from the segments or image strips, can be displayed to or
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`viewed simultaneously by the left and right eyes of a person to provide a sense of
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`depth.
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`The ’284 Patent, in one illustrative embodiment of Figs. 2-5, describes a
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`video camera (21) as a stereoscopic data source that includes an image capture unit
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`(30), local memory unit (31), a processing unit (32), one or more displays 33A and
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`33B. (Sony-1001 at 6:55-60.) As the video camera is rotated, it records a series of
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`images from which image segments or strips for left and right eyes are generated.
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`(Sony-1001 at 3:42-53) The image segments or strips are then mosaiced in
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`accordance with the separation and from the perspective of human eyes into a set
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`of panoramic images comprising a stereoscopic image set. Id. (See also, SONY-
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`1002 at 6:42-47.) The set of panoramic images can be displayed to provide the
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`person with a sense of depth.
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`As clearly demonstrated below, each of Sony’s challenges (i.e., Grounds A-
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`L) fails to adequately address at least one feature as claimed in the ’284 Patent. In
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`other words, Sony has not carried its burden. Cf. 37 C.F.R. § 42.20(c). (“The
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`moving party has the burden of proof to establish that it is entitled to the requested
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`relief.”); Scripps Research Institute v. Nemerson, 72 USPQ2d 1122, 1123 (BPAI
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`2004) (“The responsibility for developing and explaining the record for an issue
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`rests with the movant, not with the Board.”)
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`–11–
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`IV. Claim Construction
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`During patent examination, the pending claims must be “given their broadest
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`reasonable interpretation consistent with the specification.” (See, Phillips v. AWH
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`Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc).) Extrinsic evidence
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`concerning relevant scientific principles, meaning of technical terms, and state of
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`the art may also be relevant. Id. at 1314.
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`Patent Owner proposes construction of certain claim terms below pursuant
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`to the broadest reasonable interpretation consistent with the specification standard.3
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`The proposed claim constructions are offered for the sole purpose of this
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`proceeding, and thus do not necessarily reflect appropriate claim constructions to
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`be used in litigation and other proceedings where a different claim construction
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`standard applies.
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`A.
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`imager
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`The claims recite an imager. To the extent that any construction is
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`necessary, Patent Owner submits that an imager is an image recording device.
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`This proposed construction is consistent with the specification of the ’284 Patent at
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`3 For the sake of reference, the following paper will present claim language in bold
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`and italics.
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`8:30-44, which disclose that an imager, referred to as a stereoscopic data source
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`acquires an image of a scene.
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`It is noted that the claims further require that the imager acquire a plurality
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`of optical images, which are then divided into segments. The terms optical images
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`and segments are discussed below.
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`B.
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`optical image
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`The claims recite optical image. To the extent that any construction is
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`necessary, Patent Owner submits that an optical image is an image acquired by an
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`image recording device and which can be divided. This construction is consistent
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`with the other claimed features which recite a processor that receives image
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`data…[and] divide[s] each image into a plurality of segments. Further, this
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`construction is consistent with the disclosure in the specification of the ’284 Patent.
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`In more detail, the specification, with respect to Fig. 5 (reproduced below),
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`illustrates three discrete images of a scene 50(1), 50(2), and 50(3) recorded by an
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`imager referred to as a stereoscopic data source. (See, SONY-1001 at 8:30-44.)
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`The three images 50(1), 50(2), and 50(3) are divided into segments or strips a1,
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`b1,…e1, and a2, b2,…e2, and a3, b3,…e3, to generate mosaic images 51a-51e.
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`Accordingly, an optical image should be construed as an image acquired by
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`an image recording device and which can be divided.
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`C.
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`segments and image strips
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`The claims recite segments and image strips. To the extent that any
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`construction is necessary, Patent Owner submits that segments and image strips
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`are portions of acquired images.
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`This construction is consistent with the patent specification and claims.
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`Specifically, the claim language of independent claims 1 and 27 expressly requires
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`that the larger acquired images be divided by a processor into smaller portions (a
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`processor that receives image data…divide each image), and claims 20 and 37
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`further describe that the processor which has the image data generates series of
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`smaller portions (the processor…generate[s] at least three series of image strips).
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`Additionally, the specification of the ’284 Patent at Fig. 5 (reproduced above)
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`illustrates that acquired larger images are divided into smaller segments, and more
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`specifically in the illustrated example as smaller image strips. (See also, SONY-
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`1001 at 8:30-44.)
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`In the Petition, Sony argues that “the term [strips of a series of images] does
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`not require that the strips be extracted from a larger recorded image.” (Petition at
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`14). This argument fails because it ignores the above disclosure of the ’284 Patent
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`and the express elements of the claims which require dividing the acquired image.
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`To divide the acquired image, the acquired image must necessarily be larger than
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`the image strip. Because Sony’s proposed construction is inconsistent with the
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`other elements of the claims, Sony’s construction is unreasonably broad. Thus,
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`Sony’s proposed claim construction will not assist the Board and the parties in
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`evaluating the claims relative to the prior art in this case.
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`Therefore, in accordance with the other claim features and the specification,
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`segments and image strips should be construed as portions of acquired images.
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`D.
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`plurality of segments
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`In accordance with Section IV.B, the term plurality of segments should be
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`construed as two or more portions of acquired images.
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`E.
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`series of image strips
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`In accordance with Section IV.B, the term series of image strips should be
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`construed as a series of portions of acquired images.
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`F.
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`divide each image [of the scene] into a plurality of segments
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`The claims recite that the processor divide[s] each image[of the scene] into
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`a plurality of segments. To the extent that any construction is necessary, Patent
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`Owner submits that this claim term should be construed as dividing each image of
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`the scene into at least two portions.
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`Sony’s argument, in the Petition at 24 regarding Chen, seeks to introduce an
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`unsupported claim construction for this term. Specifically, Sony argues that this
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`term should be construed as separating two discrete images of the scene from each
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`other. (See, e.g., Petition at 24.) (“… separates (i.e., divides) the left image and
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`right image.”) Sony provides no evidentiary support for this construction.
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`Sony’s proposed construction is inconsistent with other claim limitations
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`and not supported by the specification of the ’284 Patent. In the context of the
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`claim, the divided images have been acquired from one different viewing position
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`(singular), optical image [of the scene] being viewed from a different respective
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`viewing position. Further, the specification at Fig. 5 (reproduced below) and
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`corresponding text plainly disclose that the divided images of the scene have been
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`acquired from one different viewing position. As such, the claim language and the
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`specification exclude Sony’s proposed construction of “separating” two discrete
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`images from each other.
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`Thus, divid[ing] each image into a plurality of segments should be
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`construed as dividing each image of the scene into at least two portions.
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`G.
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`said strips being displaced from one another
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`In accordance with Section IV.B, the term said strips being displaced from
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`one another should be construed as portions of acquired images displaced from
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`one another within the respective acquired image.
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`H.
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`sense of depth of the scene
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`The claims recite that the mosaic images are displayed to provide a sense of
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`depth of the scene. A sense of depth (i.e., stereopsis), is the visual perception of
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`differential distances among objects in a person’s line of sight. (YRD - 2003.)
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`That is, one object appears closer than another object. (See, e.g., SONY-1002 at
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`2:64-65.) Thus, under the proposed construction, a sense of depth of a scene is the
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`visual perception of differential distances among objects in a person’s line of sight.
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
`V. The Kawakita Reference is Not a “Printed Publication”, and the
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`Corresponding Grounds Should Not Be Adopted
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`Grounds A, B, E, and F of Sony’s Petition rely on the Kawakita reference.
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`The Board should decline to institute inter partes review on these Grounds because
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`Sony’s Petition fails to show that Kawakita is a printed publication. Specifically,
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`Sony alleges that 30 copies of Kawakita were distributed at a conference less than
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`one year before the earliest priority date of the ‘284 patent. (SONY-1015 at 5.) An
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`alleged copy of Kawakita distributed at the conference included the following
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`restriction: “Duplication and reproduction prohibited.” (SONY-1004 at 48
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`(emphasis added).) The Federal Circuit has recently ruled that distribution to a
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`limited number of entities with restrictions from copies or further distribution
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`prevents a finding that a distribution is a “printed publication.”
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`We have held that where a distribution is made to a limited number of
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`entities, a binding agreement of confidentiality may defeat a finding
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`of public accessibility. But we have also held that such a binding legal
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`obligation is not essential. We have noted that "[w]here professional
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`and behavioral norms entitle a party to a reasonable expectation" that
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`information will not be copied or further distributed, "we are more
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`reluctant to find something a `printed publication.'"
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`(Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333-1334 (CAFC
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`2009)(citations omitted)(emphasis added).)
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`Sony’s declarant, Mr. Kouichi Matsuda, alleges that additional copies of
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`Kawakita were provided to a university, supposedly for eventual distribution.
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`(SONY-1015). However the ’003 patent’s priority date is only a few months after
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`the previously-mentioned conference, and Sony provides no evidence that
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`Kawakita was provided to or actually distributed by the university before the ’003
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`priority date.
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`Such a finding is consistent with well-established precedent. When
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`documents are only potentially available to the public, the question of accessibility
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`hinges on whether interested members of the public would be aware of and able to
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`locate the document. (See, e.g., In re Bayer, 568 F.2d 1357 (CCPA 1978); In re
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`Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989).) Here, the interested members of
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`the public would not be able to locate the document prior to the priority date of the
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`‘003 patent.
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`Since insufficient evidence has been provided to establish that the Kawakita
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`reference is a printed publication, Patent Owner respectfully requests that the
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`Board decline to institute inter partes review on Grounds A, B, E, and F.
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`Additional reasons why Kawakita does not read on the claims are provided in
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`Section VII of the present paper.
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`–19–
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`VI.
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`In General, Ishiguro and Asahi are not Directed to Displaying Mosaic
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`Images that Provide a Sense of Depth, and the Corresponding Grounds
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`Should Not Be Adopted
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`In addition to Kawakita, Sony’s Petition refers to other primary references,
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`including Ishiguro and Asahi. These references are relied on in the challenges of
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`Grounds G-L of Sony’s Petition. However, and as will be described below, none
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`of these references are directed to generating mosaic images that can be displayed
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`to a person to provide a sense of depth of a scene.
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`Specifically, Ishiguro is directed to identifying a specific distance, or range,
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`of objects for directing a robot to move about a room. (SONY-1005 at 55, Section
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`5 Conclusion; see also Summary and Introduction.) For example, Fig. 13 of
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`Ishiguro, reproduced below, identifies an “observation point” where the robot is
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`located. The robot includes two single slit 1-pixel width imagers that rotate about
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`an axis, and accordingly, can identify the distance to various points of objects in
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`the room, labeled as points 1-19 in the figure.
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`–20–
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`As discussed above, the generated mosaic images of the’284 Patent are
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`images displayed to a person from which a person can perceive depth. Calculating
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`the distances to various points in a room for use by a robot, as disclosed by
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`Ishiguro, is not providing a sense of depth of the scene to a person, under the
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`broadest reasonable interpretation of this term, in light of the specification.
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`Likewise, Asahi is also not directed to providing a sense of depth of the
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`scene to a person. This reference is directed to flying aircraft for making contour
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`maps of the terrain. (See, e.g., Fig. 10 from Asahi reproduced below.) Asahi
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`neither teaches nor discusses generating mosaic images that are displayed to a
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`person to provide a sense of depth of the scene. (See, SONY-1010 at ¶ 0087.)
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`–21–
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`Grounds G-L of Sony’s Petition rely on Ishiguro and Asahi. Since these
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`references are not directed to displaying mosaic images to a person to provide a
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`sense of depth of the scene, the Board should decline to institute inter partes
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`review on these Grounds. Additional reasons why Ishiguro and Asahi do not
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`disclose the features recited in the claims are provided in the following section.
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`VII. Additional, Specific Reasons Why the Prior Art Does Not Invalidate the
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`Claims, and Why Inter Partes Review Should Not Be Instituted
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`As legal background to the challenges of the claims under 35 U.S.C. §102
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`(i.e., Grounds A, C, and K), Patent Owner notes that “[a] claim is anticipated only
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`if each and every element as set forth in the claim is found, either expressly or
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`inherently described, in a single prior art reference.” (M.P.E.P. § 2131) Further,
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`“[t]he identical invention must be shown in as complete detail as is contained in
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`the…claim.” Id. In other words, to anticipate a claim under 35 U.S.C. §102, a
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`reference must teach exactly what is recited in the claim. As shown below, with
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`IPR2013-00219 (Patent 7,477,284)
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`respect to the 35 U.S.C. §102 challenges, Sony has failed to demonstrate that the
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`cited references teach exactly what is recited in the claims.
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`Further, with respect to the challenges under 35 U.S.C. §103 (i.e., Grounds
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`B, D-J, and L), Patent Owner notes that it is well established that “[a] patent
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`composed of several elements is not proved obvious merely by demonstrating that
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`each element was, independently, known in the prior art. . . . it can be important to
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`identify a reason that would have prompted a person of ordinary skill in the art to
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`combine the elements as the new invention does” KSR International Co. v.
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`Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). In other words, after
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`showing that all of the claim elements are known in the prior art, the challenging
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`party must do more. As shown below, however, Sony’s 35 U.S.C. §103 challenges
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`fail to meet even the initial burden of “demonstrating that each element was,
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`independently, known in the prior art.”
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`A. No Trial Should Be Instituted for Grounds A, B, E, and F
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`Ground A of Sony’s Petition asserts that claims 1, 10, 27, and 36 are
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`anticipated by Kawakita under 35 U.S.C. §102. Ground B asserts that claims 1,
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`10, 20, 27, 36, and 37 are rendered obvious by Kawakita under 35 U.S.C. §103.
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`Ground E asserts that claims 1, 2, 10, 20, 27, 28, 36, and 37 are rendered obvious
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`by Kawakita in view of Chen under 35 U.S.C. §103. Ground F asserts that claims
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`Patent Owner’s Preliminary Response
`IPR2013-00219 (Patent 7,477,284)
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`3 and 29 are rendered obvious by Kawakita in view of Kodak under 35 U.S.C.
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`§103.
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`In addition to Sony’s failure to show that Kawakita is prior art to the ’284
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`Patent, as already discussed above in Section V, there is another explicit and
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`fundamental flaw with Kawakita that prevents it from reading on these claims.
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`Namely, and as shown below, the mosaic images of Kawakita identified by Sony
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`cannot provide a sense of depth. As such, Sony’s Petition has not presented a
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`reasonable likelihood that it will prevail with respect to Grounds A, B, E, and F.
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`Independent Claims 1 and 27 of the ’284 Patent recite, in part:
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`a processor [to] generate a plurality of mosaics of the scene
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`[and] a display that receives a plurality of the mosaics and displays
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`them so as to provide a sense of depth of the scene.
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`Claims 2, 3, 10, 27, 28, 28, and 36, depend from claims 1 or 27, and therefore
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`include the same elements.
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`Sony’s Petition asserts that Kawakita generates two mosaic images, depicted
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`in Fig. 5 (reproduced below), and that those images are displayed to 10 research
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`personal to provide a sense of depth. (Petition at 17-19.) Sony’s arguments are
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`unsupported and fail for two reasons.
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`IPR2013-00219 (Patent 7,477,284)
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`(i) The two images in Fig. 5 cannot provide a sense of depth – further
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`processing is required. Contrary to Sony’s contention, the generated images of
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`Fig. 5 cannot provide a sense of depth. Instead, Kawakita clearly states with
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`respect to the left (top) and right (bottom) images of Fig. 5 that “the positions
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`representing the left and right panoramic images must be adjusted…this process is
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`necessary….” (SONY-1004 at 17 (emphasis added).) If the images are not
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`adjusted when the panoramic images are viewed simultaneously, “objects appear to
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`overlap or [have] some other fault, making faithful stereoscopic viewing
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`impossible.” (SONY-1004 at 17 (emphasis added).) Thus, it is “impossible” to
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`display the two images of Fig. 5 to provide a sense of depth. Although the
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`Kawakita presenters recognized and admitted to this fault in their system, Sony’s
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`petition fails to address it. As discussed below, the images of Fig. 5 are changed to
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`provide a sense of depth.
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`IPR2013-00219 (Patent 7,477,284)
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`Kawakita goes on to explain that the images of Fig. 5 must be further
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`adjusted by changing