`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`
`
`
`Case No. IPR2013-00219 (SCM)1
`
`
`
`Patent No. 7,477,284
`Issue Date: Jan. 13, 2009
`Title: SYSTEM AND METHOD FOR CAPTURING AND VIEWING
`STEREOSCOPIC PANORAMIC IMAGES
`
`__________________________________________________________________
`
`
`
`REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`__________________________________________________________________
`
`
`
`
`1 Case IPR2013-00327 has been merged with this case.
`
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction .................................................................................................................... 1
`
`Request for Hearing ...................................................................................................... 2
`
`A. Grounds Challenging Claims 1, 2, 3, 4, 7, 10, 27, 28, 29, 36 and 38 Based on
`Ishiguro Are Not Redundant. ................................................................................... 3
`1.
`The Grounds Based on Ishiguro Are Not Redundant Because Patent
`Owner Has Challenged the Prior Art Status of Kawakita. ..................... 4
`
`2.
`
`The Grounds Based on Ishiguro Are Not Redundant Because the
`Board Is Already Considering the Patentability of Substantively
`Similar Claims in View of Ishiguro in Related IPR2013-00218. ............ 5
`
`B. The Board Should Institute Review of Challenged Claims 20 and 37 Based on
`Kawakita Because of the Decision to Review a Similar Claim Based on
`Kawakita in Related IPR2013-00218. ....................................................................... 7
`C. The Board Should Institute Review of Challenged Claims 20 and 37 on
`Grounds Based on Ishiguro. ..................................................................................... 9
`D. The Board Should Institute Review of Challenged Claim 38 Based on Asahi
`Because of the Decision to Review Claims 1 and 27 Based on Asahi. ............. 10
`III. Conclusion .................................................................................................................... 11
`
`IV. Appendix: Listing of Corresponding Grounds Based on Ishiguro ..................... 12
`
`
`
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`I.
`
`Introduction
`
`Petitioner Sony Corporation (“Sony”) requests rehearing of the Decision
`
`regarding Institution of Inter Partes Review of U.S. Patent No. 7,477,284 (the “’284
`
`Patent”), IPR2013-000219 Paper No. 16 (P.T.A.B. Sep. 23, 2013) (the “First
`
`Decision”) and the Decision regarding Institution of Inter Partes Review of the ’284
`
`Patent, IPR2013-00327, Paper No. 14 (P.T.A.B. Sep. 24, 2013) (the “Second
`
`Decision”).
`
`In the First Decision and Second Decision (collectively, the “Decisions”), the
`
`Board instituted inter partes review of all claims of the ’284 Patent challenged by Sony.
`
`With respect to all challenged claims except claims 20 and 37, the Board instituted
`
`inter partes review on grounds of unpatentability based on Kawakita, Sony-1003 and
`
`Sony-1004. However, the Board declined to institute inter partes review of the same
`
`claims on grounds based on Ishiguro, Sony-1005, because the Board found that such
`
`grounds were redundant. Also, as noted, the Board declined to institute inter partes
`
`review with respect to claims 20 and 37 on grounds based on Kawakita because the
`
`Board found that Sony failed “to demonstrate that Kawakita teaches or suggests the
`
`mosaicing of at least three series of image strips together.” See First Decision at 26
`
`(emphasis in original). Although the Board instituted inter partes review of
`
`independent apparatus claims 1 and 27 on grounds of anticipation by Asahi (see First
`
`Decision at 29-33), the Board declined to institute inter partes review with respect to
`
`1
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`corresponding independent method claim 38 based on Asahi because the Board
`
`found the ground to be redundant. See Second Decision at 12.
`
`II. Request for Hearing
`
`Sony respectfully requests that the Board reconsider the decision not to
`
`institute inter partes review on the following grounds set forth in Sony’s petitions:
`
`-
`
`Claims 1, 3, 27, 29, and 38 would have been obvious under 35 U.S.C. § 103
`
`over Ishiguro. See Sec. II.A.
`
`-
`
`Claims 1, 2, 3, 10, 27, 28, 29, 36 and 38 would have been obvious under
`
`35 U.S.C. § 103 over Ishiguro in view of Chen, Sony-1006. See Sec. II.A.
`
`-
`
`Claims 3 and 29 would have been obvious under 35 U.S.C. § 103 over Ishiguro
`
`in view of Chen and Kodak, Sony-1007. See Sec. II.A.
`
`-
`
`Claims 4 and 7 would have been obvious under 35 U.S.C. § 103 over Ishiguro
`
`in view of Chen and Allen, Sony-1039. See Sec. II.A.
`
`-
`
`Claims 20 and 37 would have been obvious under 35 U.S.C. § 103 over
`
`Kawakita. See Sec. II.B.
`
`-
`
`Claims 20 and 37 would have been obvious under 35 U.S.C. § 103 over
`
`Kawakita in view of Chen. See Sec. II.B.
`
`-
`
`Claims 20 and 37 would have been obvious under 35 U.S.C. § 103 over
`
`Ishiguro. See Sec. II.C.
`
`-
`
`Claims 20 and 37 would have been obvious under 35 U.S.C. § 103 over
`
`Ishiguro in view of Chen. See Sec. II.C.
`
`2
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`Claims 38 is anticipated by Asahi under 35 U.S.C. § 102. See Sec. II.D.
`-
`
`A. Grounds Challenging Claims 1, 2, 3, 4, 7, 10, 27, 28, 29, 36 and 38 Based
`on Ishiguro Are Not Redundant.
`
`In order to “secure the just, speedy, and inexpensive resolution of every [inter
`
`partes review] proceeding,” the Board may decline to consider grounds of
`
`unpatentability if the grounds “are presented in a redundant manner.” See CBM2012-
`
`00003, Paper No. 7 at 2 (P.T.A.B. Oct. 25, 2012) (quoting 37 C.F.R. § 42.1(b)).
`
`However, the Board has indicated that a reference is not redundant where the
`
`petitioner has shown it to be “better in some respect” than a reference on which the
`
`Board has based the grant of the petition. Id. at 3.
`
`Here, the Board has granted Sony’s petitions with respect to claims 1, 2, 3, 4, 7,
`
`10, 27, 28, 29, 36 and 38 of the ’284 Patent on grounds based on Kawakita (alone or
`
`in combination with other references), but not on corresponding grounds based on
`
`Ishiguro,2 because of perceived redundancy. See First Decision at 35, Second Petition
`
`at 12. The corresponding grounds based on Ishiguro are not redundant for at least
`
`one key reason discussed below. Moreover, consideration of the grounds based on
`
`Ishiguro will not significantly expand the scope of inter partes review because the Board
`
`2
`A list of the grounds presented in Sony’s petitions that correspond to the
`
`Kawakita-based grounds that the Board has decided to review is included in the
`
`Appendix hereto.
`
`
`
`3
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`has decided to consider the patentability of claims directed to substantively similar
`
`subject matter in view of Ishiguro in related IPR2013-00218.
`
`1.
`
`The Grounds Based on Ishiguro Are Not Redundant Because Patent
`Owner Has Challenged the Prior Art Status of Kawakita.
`
`Ishiguro is “better in some respect” than Kawakita, and, therefore, not
`
`redundant of Kawakita because Patent Owner (“Yissum”) challenges the prior art
`
`status of Kawakita, but not Ishiguro. See Patent Owner Preliminary Response at 18-
`
`19 (June 27, 2013) (“Preliminary Response”); First Decision at 19-20. In particular,
`
`Yissum has argued that Kawakita is not a printed publication under 35 U.S.C. § 102(a)
`
`because an alleged “restriction” printed on the publication “prevents a finding that
`
`[Kawakita] is a ‘printed publication.’” See Preliminary Response at 18. Yissum also
`
`challenged the sufficiency of the evidence that Kawakita is a printed publication,
`
`arguing that Sony “provides no evidence that Kawakita was . . . actually distributed”
`
`before the alleged priority date of the ’284 Patent. Id. at 19.
`
`If the Board ultimately agrees with Yissum that Kawakita is not a printed
`
`publication, then the Board necessarily will rule by default, rather than on the merits,
`
`that certain challenged claims of the ’284 Patent are patentable.3 The situation here
`
`
`The Board instituted inter partes review of claims 2, 4, 7, 10, 28 and 36 only on
`3
`
`grounds based on Kawakita. Accordingly, if the Board finds that Kawakita is not
`
`
`
`4
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`stands in contrast to the one before the Board in IPR2013-000120, where the Board
`
`ruled that the prospect that the patent owner might try to swear behind a 102(e)
`
`reference was speculative, and therefore not a basis for finding lack of redundancy.
`
`See IPR2013-000120, No. 20 at 4 (P.T.A.B. July 22, 2013). Here, there is no such
`
`speculation: Yissum challenges the prior art status of Kawakita. Accordingly, Ishiguro
`
`is “better in some respect” than Kawakita, and, therefore, is not redundant of
`
`Kawakita because Ishiguro’s prior art status is not disputed.4 See CBM2012-00004,
`
`Paper No. 7 at 2.
`
`2.
`
`The Grounds Based on Ishiguro Are Not Redundant Because the Board
`Is Already Considering the Patentability of Substantively Similar Claims
`in View of Ishiguro in Related IPR2013-00218.
`
`The Board should include the proposed grounds based on Ishiguro because it
`
`has instituted review of similar claims over Ishiguro in IPR2013-00218 concerning
`
`related U.S. Patent No. 6,665,003 (the “’003 Patent,” Sony-1002). See IPR2013-00218,
`
`Paper No. 16 at 27-28 (P.T.A.B. Sep. 23, 2013). The ’284 Patent claims priority to the
`
`prior art, the Board will necessarily find these claims patentable because the Board has
`
`instituted review on no other grounds.
`
`4
`
`Moreover, Ishiguro is also “better in some respect” than Kawakita, and not
`
`redundant, because Ishiguro expressly discloses a processor whereas a processor is
`
`inherent in the disclosure of Kawakita. See CBM2012-00004, Paper No. 7 at 2;
`
`Petition at 19-20, 37.
`
`5
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`’003 Patent and the specification of the ’284 Patent incorporates the ’003 Patent by
`
`reference (calling it “Peleg I”), as the Board has noted. See ’003 Patent, 1:10-11, 21-
`
`26; First Decision at 3 n. 2. The ’284 Patent states that the image recording and
`
`processing arrangements are “similar to those described in the Peleg I” application.
`
`See id. at 3:33-34. Independent claims 1 and 36 of the ’003 Patent at issue in IPR2013-
`
`00218 encompass the same strip generation and mosaicing methodology as that
`
`recited with respect to the imaging apparatus and method of challenged independent
`
`claims 1, 27 and 38 of the ’284 patent.
`
` By not considering the patentability of the challenged claims of the ’284 Patent
`
`in view of Ishiguro, yet considering the patentability of substantively similar claims of
`
`the ’003 Patent in view of Ishiguro, the Board invites contradictory outcomes. That
`
`is, claims of the ’003 Patent could be found unpatentable over Ishiguro while
`
`substantively similar claims of the ’284 Patent could be found patentable by default
`
`upon a ruling that Kawakita is not prior art. The proposed grounds based on Ishiguro
`
`cannot be fairly characterized as redundant, where, as here, declining to consider them
`
`could produce such an anomalous result.
`
`Moreover, the burden of considering the proposed grounds based on Ishiguro
`
`will be relatively minimal because of the fact that the same panel of Administrative
`
`Patent Judges is already considering Ishiguro with respect to the challenged claims of
`
`the ’003 Patent. See IPR2013-000218, Paper No. 16 at 27 (P.T.A.B. Sep. 23, 2013).
`
`Indeed, Yissum’s principal arguments with respect to Ishiguro in its Preliminary
`
`6
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`Response in this inter partes review were nearly identical to its arguments in IPR2013-
`
`00218 with respect to the claims of the ’003 Patent. Compare IPR2013-00218, Patent
`
`Owner Preliminary Response, No. 12 at 19-21, 27-32 and IPR2013-00219, Patent
`
`Owner Preliminary Response, No. 13 at 20-22, 35-42. Oral argument, if requested,
`
`will be held on the same day, and presumably during the same session for both the
`
`’284 Patent and the ’003 Patent. See IPR2013-000218, Scheduling Order, No. 17
`
`(P.T.A.B. Sep. 23, 2013); IPR2013-000219, Scheduling Order, No. 17 (P.T.A.B. Sep.
`
`23, 2013). During oral argument, the Board will already be hearing arguments from
`
`both sides with respect to Ishiguro and in the Final Written Decision the Board will
`
`directly address Ishiguro. Accordingly, adding grounds based on Ishiguro in the
`
`instant proceeding will not impose a significant burden on the Board.
`
`Accordingly, for the forgoing reasons, the Board should reconsider its Decision
`
`and institute review of claims 1, 2, 3, 4, 7, 10, 27, 28, 29, 36 and 38 of the ’284 Patent
`
`on the proposed grounds based on Ishiguro.
`
`B. The Board Should Institute Review of Challenged Claims 20 and 37
`Based on Kawakita Because of the Decision to Review a Similar Claim
`Based on Kawakita in Related IPR2013-00218.
`
`The Board should also institute review of challenged claims 20 and 37 over
`
`Kawakita and over Kawakita in view of Chen because the Board is reviewing a
`
`substantively similar claim in view of Kawakita in IPR2013-00218. Claims 20 and 37
`
`of the ’284 Patent each recite, inter alia, that “the processor is adapted to generate at
`
`least three series of image strips” and “further adapted to mosaic the respective series
`
`7
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`of image strips together.” ’284 Patent, claims 20, 37. Similarly, claim 22 of the ’003
`
`Patent incorporates the limitations of claim 1—which recites mosaicing together two
`
`respective series of image strips—and adds mosaicing together a third series of image
`
`strips. ’003 Patent, claim 22. With respect to claims 20 and 37 of the ’284 Patent, the
`
`Board denied institution on grounds based on Kawakita, stating that “Petitioner fails
`
`[] to demonstrate that Kawakita teaches or suggests the mosaicing of at least three
`
`image strips together.” First Decision at 26 (emphasis in original). However, at the
`
`same time, the Board correctly found that Sony established a reasonable likelihood of
`
`prevailing on the ground that claim 22 was rendered obvious by Kawakita. See
`
`IPR2013-00218, Paper No. 16 at 23. There, the Board noted that, as Sony had
`
`explained, “combining two different embodiments in Kawakita would have been
`
`obvious for the purpose of creating a single camera to capture two types of images[.]”
`
`Id.
`
`For the sake of consistency and to avoid conflicting rulings, the Board should
`
`institute review of claims 20 and 37 in the ’284 Patent over Kawakita because the
`
`same panel of Administrative Patent Judges will consider the patentability of similar
`
`claim 22 of the ’003 Patent in view of Kawakita.
`
`Moreover, because the Board is reviewing the patentability of claims 1 and 27
`
`over not only Kawakita, but also over Kawakita in view of Chen, the Board should
`
`also institute review of claims 20 and 37 over Kawakita in view of Chen. Claims 20
`
`and 37 are dependent on claims 1 and 27, respectively. Therefore, for the sake of
`
`8
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`consistency, the Board should also include the alternative ground of Kawakita in view
`
`of Chen for claims 20 and 37 because they incorporate the limitations of claims 1 and
`
`27 that the Board has decided to review over Kawakita in view of Chen.
`
`C. The Board Should Institute Review of Challenged Claims 20 and 37 on
`Grounds Based on Ishiguro.
`
`The Board should also institute review of challenged claims 20 and 37 over
`
`Ishiguro and over Ishiguro in view of Chen. First, as discussed with respect to
`
`Ishiguro above in Section II.B, the Board should find that Sony has established a
`
`reasonable likelihood of prevailing on the ground that Ishiguro renders claims 20 and
`
`37 obvious, just as the Board found that Sony has established a reasonable likelihood
`
`of prevailing on the ground that Ishiguro renders claim 22 of the ’003 Patent obvious.
`
`IPR2013-00218, Paper No. 16 at 25 (“Petitioner establishes a reasonable likelihood of
`
`prevailing on the ground of unpatentability of . . . claim 22 as rendered obvious over,
`
`Ishiguro.”); supra Sec. II.B.
`
`Second, the Board should find that the grounds based on Ishiguro are not
`
`redundant of those based on Kawakita for the reasons discussed above in Section
`
`II.A. Namely, Ishiguro is not redundant because Yissum is challenging the prior art
`
`status of Kawakita, supra II.A.1, and because the Board is already evaluating Ishiguro
`
`in a related proceeding against a similar claim, supra II.A.2.
`
`
`
`9
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`D. The Board Should Institute Review of Challenged Claim 38 Based on
`Asahi Because of the Decision to Review Claims 1 and 27 Based on
`Asahi.
`
`The Board should also institute review of challenged claim 38 as anticipated by
`
`Asahi because the Board is already reviewing substantively similar claims 1 and 27 in
`
`view of Asahi. Claim 38 is a method claim that recites essentially the same claim
`
`limitations for purposes of patentability as claim 1 and 27. See ’284 Patent, claims 1,
`
`27, 38. The Board set forth detailed reasons as to why Sony had shown a reasonable
`
`likelihood of prevailing on grounds of unpatentability of claims 1 and 27 as
`
`anticipated by Asahi. See First Decision at 29-33. Those same reasons apply equally
`
`to claim 38. Yissum’s Preliminary Response to Sony’s arguments that Asahi
`
`anticipates claim 38 was virtually identical to Yissum’s Preliminary Response to Sony’s
`
`arguments that Asahi anticipates claims 1 and 27. Compare IPR2013-00327, Patent
`
`Owner Preliminary Response, No. 13 at 44-49 and IPR2013-00219, Patent Owner
`
`Preliminary Response, No. 13 at 42-47. For the sake of consistency, in order to avoid
`
`conflicting rulings among similar claims, and because the additional burden of
`
`considering anticipation of claim 38 by Asahi will be minimal if not nonexistent, the
`
`Board should institute review of claim 38 as anticipated by Asahi.
`
`
`
`
`
`10
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`III. Conclusion
`
`In view of the foregoing, Petitioner respectfully requests the Board’s
`
`reconsideration of the grounds discussed herein for institution of inter partes review of
`
`claims 1, 2, 3, 4, 7, 10, 20, 27, 28, 29, 36, 37 and 38 of the ’284 Patent.
`
`Dated: October 7, 2013
`
`
`
`
`
`
`
`
`
`
`_/s/ Walter Hanley__
`Walter Hanley, Lead Counsel, Reg. No 28,720
`whanley@kenyon.com
`Michelle Carniaux, Backup Counsel, Reg. No. 36,098
`mcarniaux@kenyon.com
`KENYON & KENYON LLP
`One Broadway, New York, NY 10004-1007
`
`11
`
`
`
`
`IPR2013-00219 - Inter Partes Review of U.S. Pat. No. 7,477,284
`Request for Rehearing
`IV. Appendix: Listing of Corresponding Grounds Based on Ishiguro
`
`Claims
`
`Grounds Granted in the
`Decisions Based on Kawakita
`
`Corresponding Grounds Based on
`Ishiguro for Which Rehearing is
`Requested
`
`Kawakita, §102;
`Kawakita, §103; and
`Kawakita and Chen, §103
`Kawakita and Chen, §103
`
`
`
`Kawakita, Chen, and Kodak, §103
`Kawakita, Chen, and Allen, §103
`Kawakita, Chen, and Allen, §103
`Kawakita, §102;
`Kawakita, §103; and
`Kawakita and Chen, §103
`Kawakita, §102;
`Kawakita, §103; and
`Kawakita and Chen, §103
`Kawakita and Chen, §103
`
`Kawakita, Chen, and Kodak, §103
`Kawakita, §102;
`Kawakita, §103; and
`Kawakita and Chen, §103
`Kawakita, §102
`
`
`
`1
`
`2
`
`3
`
`4
`7
`
`10
`
`27
`
`28
`
`29
`
`36
`
`38
`
`
`See IPR2013-000219 Paper No. 3 at 12-13 (P.T.A.B. Mar. 29, 2013) and IPR2013-
`
`00327, Paper No. 2 at 14-15 (P.T.A.B. July 3, 2013).
`
`
`
`12
`
`
`
`Ishiguro, §103; and
`Ishiguro and Chen, §103
`Ishiguro and Chen, §103
`Ishiguro, §103;
`Ishiguro and Chen, §103; and
`Ishiguro, Chen, and Kodak, §103
`Ishiguro, Chen, and Allen, §103
`Ishiguro, Chen, and Allen, §103
`
`
`
`Ishiguro and Chen, §103
`
`Ishiguro, §103; and
`Ishiguro and Chen, §103
`Ishiguro and Chen, §103
`Ishiguro, §103;
`Ishiguro and Chen, §103; and
`Ishiguro, Chen, and Kodak, §103
`
`
`
`Ishiguro and Chen, §103
`Ishiguro, §103; and
`Ishiguro and Chen, §103
`
`
`
`
`
`
`
`Certificate of Service Under 37 C.F.R. § 42.6(e)(4)
`
`I certify that I caused a true and correct copy of the forgoing to be served via
`
`Electronic Mail on the following:
`
`
`
`William Nelson and Robert Gerrity
`
`David McCombs and David O’Dell
`
`Robert.gerrity@tensegritylawgroup.com
`
`David.mccombs.ipr@haynesboone.com
`
`William.nelson@tensegritylawgroup.com
`
`David.odell.ipr@haynesboone.com
`
`Tensegrity Law Group LLP
`
`Haynes and Boone, LLP
`
`555 Twin Dolphin Dr., Suite 360
`
`2323 Victory Avenue, Suite 700
`
`Redwood Shores, CA 94065
`
`Dallas, Texas 75219
`
`
`
`_/s/ Michael E. Sander __
`Michael E. Sander
`Reg. No. 71,667
`msander@kenyon.com
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: 212-425-7200
`
`
`
`
`
`
`
`Dated: _October 7, 2013___