Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`SONY CORPORATION
`Petitioner
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`v.
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`Patent of YISSUM RESEARCH DEVELOPMENT COMPANY OF THE
`HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner
`___________________
`
`Case IPR2013-00327
`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
`IPR2013-00327 (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 and Summary of the Present Paper ............................................... 6
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`A. The Board Should Adopt the Appropriate Claim Construction .................... 6
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`B. The Board Should Decline to Institute Inter Partes Review ........................ 6
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`In the Event that a Trial is Granted, the Board Should Exclude Several
`C.
`of the Proposed Grounds of Rejection. .................................................................. 7
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`1. The prior art is cumulative ......................................................................... 7
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`2. YRD is unduly prejudiced ........................................................................... 8
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`3. Several of the grounds are unclear and imprecise .................................... 9
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`III. Claim Construction and Overview of U.S. Patent No. 7,477,284 .................10
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`A. Overview of the ’284 Patent ........................................................................10
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`B. Claim Construction ......................................................................................13
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`1.
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`imager .......................................................................................................14
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`2. optical image ............................................................................................14
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`3.
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`segments ...................................................................................................16
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`4. plurality of segments ................................................................................16
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`5. divide each image [of the scene] into a plurality of segments .................16
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`6.
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`sense of depth of the scene .......................................................................18
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`IV. Reasons Why Inter Partes Review Should Not Be Granted ..........................18
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`A. The Kawakita Reference is Not a “Printed Publication”, and the
`Corresponding Grounds Should Not Be Adopted ...............................................18
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`In General, Ishiguro, Asahi, and Allen are not Directed to Displaying
`B.
`Mosaic Images that Provide a Sense of Depth, and the Corresponding
`Grounds Should Not Be Adopted ........................................................................20
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`C. Missing Claim Elements – Legal Background............................................22
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`D. Grounds A and D are Missing Claim Elements ..........................................25
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`E. Grounds B and E are Missing Claim Elements ...........................................31
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`F. Grounds C and F-H are Missing Claim Elements .......................................37
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`G. Grounds I and J are Missing Claim Elements .............................................44
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`V. Conclusion .......................................................................................................50
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`Certificate of Service ...............................................................................................52
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`
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
`In re Bayer,
`568 F.2d 1357 (CCPA 1978) …………………………….……………….19
`
`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) ……………………………….……………..19
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999)……………………………………………….25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)(en banc)…………………………..………13
`
`
`REGULATORY CASES
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003 (Paper
`No. 7) (PTAB Oct. 25, 2012) ……..……………………….……………....8
`
`
`Oracle Corp. v. Clouding IP, LLC, IPR2013-00088 (Paper No. 13), at 4-5 (PTAB
`June 13, 2013) ……..……………………………...……….……………....8
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`Scripps Research Institute v. Nemerson,
`72 USPQ2d 1122 (BPAI 2004) ………………………….……….….…….13
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`Stampa v. Jackson,
`78 USPQ2d 1567 (BPAI 2005)…………………………………………….25
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`FEDERAL STATUTES
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`35 U.S.C. § 102…….……………………..………………………22, 23, 25, 31, 44
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`35 U.S.C. § 103……………….………………………..…………23, 25, 31, 37, 44
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`35 U.S.C. § 314(a) ………………………………………………..………………..7
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`35 U.S.C. § 315(b) ………………………………………………..………………..8
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`REGULATIONS
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`37 C.F.R. § 42.1(b)………………………………..……….………………...……..8
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`37 C.F.R. § 42.20 (c) ……………………………………………………………..13
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`37 C.F.R. § 42.22(a)(1) ………………………………………………….…….…..9
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`37 C.F.R. § 42.104(b)(4) ………………………………..……………….………...7
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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
`IPR2013-00327 (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. IPR2013-00219, Inter partes review of U.S. Patent No. 7,477,284.
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`2. IPR2013-00218, Inter partes review of U.S. Patent No. 6,665,003.
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`3. IPR2013-00326, Inter partes review of U.S. Patent No. 6,665,003.
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`4. 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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`II.
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`Introduction and Summary of the Present Paper
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`Patent Owner’s Preliminary Response
`IPR2013-00327 (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 July 3, 2013, requesting inter
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`partes review of Claims 4, 7 and 38 of U.S. Patent No. 7,477,284 (the “’294
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`Patent”). Sony has proposed to join the present IPR with IPR2013-00219, in
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`which Claims 1, 2, 3, 10, 20, 27-29, and 36-37 were challenged. New Claims 4
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`and 7 ultimately depend on independent Claim 1, which was in the ’219 IPR, and
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`new Claim 38 is independent.
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`YRD has already submitted a paper opposing joinder of these two IPRs. In
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`the event they are joined, YRD requests the following:
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`A. The Board Should Adopt the Appropriate Claim Construction
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` Section III below provides a summary of the ’284 Patent, and further
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`provides the broadest reasonable interpretation of several terms in the above-listed
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`claims.
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`B.
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`The Board Should Decline to Institute Inter Partes Review
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`Section IV below provides multiple reasons why the Board should decline to
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`grant inter partes review of the ’284 Patent. It is noted that the primary references
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`in the present ’327 IPR are the same as those in the previous ’219 IPR, and the
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`reasons set forth in the present paper are similar to and consistent with the reasons
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`Patent Owner’s Preliminary Response
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`provided in YRD’s preliminary response filed in the ’219 IPR. In summary, the
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`prior art of record fails to meet the threshold for initiating inter partes review.
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`“The petition must specify where each element of the claim is found in the prior art
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`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board
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`should not institute a trial because, for each ground of rejection, at least one claim
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`element is missing. Consequently, Sony has not met the basic threshold required
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`by statute: it has not shown that there is a “reasonable likelihood that [it] would
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`prevail with respect to at least [one] of the claims challenged in the petition.” 35
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`U.S.C. § 314(a).
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`C.
`In the Event that a Trial is Granted, the Board Should Exclude
`Several of the Proposed Grounds of Rejection.
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`There are at least three reasons why one or more of the proposed Grounds of
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`rejection should be excluded from the trial.
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`1.
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`The prior art is cumulative
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`Sony’s Petition relies on cumulative teachings in presenting its challenges
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`for Grounds A-J. Sony’s Petition relies on the following primary references:
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`Kawakita, Chen, Ishiguro, and Asahi. The Petition relies on these references and
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`sets forth at least three different permutations of combinations in providing
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`proposed rejections for Claims 4 and 7 and sets forth at least seven different
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`permutations of combinations in providing proposed rejections for Claim 38. The
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`Petition makes no attempt to articulate a meaningful distinction in terms of relative
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`Patent Owner’s Preliminary Response
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`strengths and weaknesses with respect to applying these references to the various
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`claim elements. Accordingly, the proposed Grounds are redundant, and if a trial is
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`granted the Board should only institute an inter partes review based on a single
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`Ground. (See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-
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`00003 (Paper No. 7), at 2 (PTAB Oct. 25, 2012) (Patent Review Processing
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`System); see also Oracle Corp. v. Clouding IP, LLC, IPR2013-00088 (Paper No.
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`13), at 4-5 (PTAB June 13, 2013).)
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`2.
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`YRD is unduly prejudiced
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`As mentioned in YRD’s previously-filed opposition to joinder, Sony has
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`been pushing the envelope on its filings. Sony filed its petition for the ’219 IPR
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`one year (to the day) after the corresponding lawsuit was filed. As mentioned
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`above, the ’219 IPR identifies some, but not all, of the claims of the ’284 patent.
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`Three months later (and well after the 1-year statutory bar had expired – 35 U.S.C.
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`§ 315(b)), Sony filed its petition for the present ’327 IPR adding 3 new claims.
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`The Board has given YRD a shortened time period (approximate 6 weeks) in
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`which to provide a preliminary response to the present ’327 IPR.
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`Given Patent Owner’s shorted time and the significant additional analysis
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`and expense required to respond to the present ’327 IPR and the Board’s mandate
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`for a “just, speedy, and inexpensive resolution,” under C.F.R. § 42.1(b), the Patent
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`Patent Owner’s Preliminary Response
`IPR2013-00327 (Patent 7,477,284)
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`Owner is significantly prejudiced. For this reason, YRD requests that the Board
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`remove any cumulative Grounds of rejection.
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`3.
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`Several of the grounds are unclear and imprecise
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` In addition, several of the proposed Grounds of rejection provide a
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`confusing array of alternative fallback positions. For example, with respect to
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`Ground A and the claim term “processor,” Sony argues:
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`If the Board finds that Kawakita does not inherently disclose a
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`processor, it would have been obvious ….
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`Moreover, assuming that the Board finds that “a processor” in claim 1
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`is not inherently disclosed by or obvious in view of Kawakita alone,
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`Chen explicitly discloses….
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`(Sony’s Petition at p. 21, citations removed.) YRD submits that this is not just one
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`Ground of rejection, but is actually many different Grounds of rejection. As such,
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`Sony’s petition is not a “statement of the precise relief requested,” as required
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`under 37 CFR 42.22(a)(1).
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`YRD requests that, in light of the present circumstances, the Board deny all
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`alternative rejections. That is, a Ground (if granted) should be based only on the
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`rejection as first proposed. In the example citation above, Ground A would rely
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`solely on Kawakita as allegedly teaching the claimed “processor.”
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`Patent Owner’s Preliminary Response
`IPR2013-00327 (Patent 7,477,284)
`III. Claim Construction and Overview of U.S. Patent No. 7,477,284
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`As a preliminary matter and to facilitate claim construction, a general
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`overview of the ’284 Patent is provided.
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`A. Overview of the ’284 Patent
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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 U.S. 6,665,003 (the “’003
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`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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`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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`1101 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-1101 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-1103 at 3:8-31; see also 2:55-59 (emphasis added).)
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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-1103 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-1101 at 6:55-60.) As the video camera is rotated, it records a series of
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`images from which image segments or strips for left and right eyes are generated.
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`(Sony-1101 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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`1103 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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`J) 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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`B. Claim Construction
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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’s Preliminary Response
`IPR2013-00327 (Patent 7,477,284)
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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.1
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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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`1.
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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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`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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`2.
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`optical image
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`The claims recite an 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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`1 For the sake of reference, the following paper will present claim language in bold
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`and italics.
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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-1101 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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`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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`3.
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`segments
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`The claims recite segments. To the extent that any construction is necessary,
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`Patent Owner submits that segments 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 38 expressly requires
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`that the larger acquired images be divided into smaller portions (… receives image
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`data…divide each image). Additionally, the specification of the ’284 Patent at
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`Fig. 5 (reproduced above) illustrates that acquired larger images are divided into
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`smaller segments, and more specifically in the illustrated example as smaller image
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`strips. (See also, SONY-1101 at 8:30-44.) Therefore, in accordance with the other
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`claim features and the specification, segments should be construed as portions of
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`acquired images.
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`4.
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`plurality of segments
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`In accordance with Section VI.B.3, the term plurality of segments should be
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`construed as two or more portions of acquired images.
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`5.
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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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`Patent Owner’s Preliminary Response
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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 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 27-28.) (“… 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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`(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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`6.
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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-1103 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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`IV. Reasons Why Inter Partes Review Should Not Be Granted
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`A. The Kawakita Reference is Not a “Printed Publication”, and the
`Corresponding Grounds Should Not Be Adopted
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`Grounds A and D of Sony’s Petition rely on the Kawakita reference. The
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`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-1116 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-1105 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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`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-1116). However the ’ 284 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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`Patent 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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`’284 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 and D. Additional
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`reasons why Kawakita does not read on the claims are provided in Section IV.D of
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`the present paper.
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`B.
`In General, Ishiguro, Asahi, and Allen are not Directed to
`Displaying Mosaic Images that Provide a Sense of Depth, and the
`Corresponding Grounds 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 A-C and F-J of Sony’s Petition. However, and as will be described
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`below, none of these references are directed to generating mosaic images that can
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`be displayed 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-1106 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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`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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`Similarly, 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-1111 at ¶ 0087.)
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`Likewise, Allen is not directed to a system that provides a sense of depth of
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`the scene to a viewer. Rather, Allen merely teaches a camera that captures images
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`and transmits the images to a server. Indeed, Allen neither teaches nor suggests
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`that any of its teachings can be used in connection with a system that provides a
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`sense of depth of the scene to a viewer.
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`Grounds A-C and F-J of Sony’s Petition rely on Ishiguro, Asahi, and Allen.
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`Since these references are not directed to displaying mosaic images to a person to
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`provide a sense of depth of the scene, the Board should decline to institute inter
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`partes review on these Grounds. Additional reasons why Ishiguro, Asahi, and
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`Allen do not disclose the features recited in the claims are provided in the
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`following section.
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`C. Missing Claim Elements – Legal Background
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`As legal background to the proposed Grounds of rejections (i.e., Grounds D,
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`E, and I), which are under 35 U.S.C. §102, Patent Owner notes that “[a] claim is
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`anticipated only if each and every element as set forth in the claim is found, either
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`expressly or inherently described, in a single prior art reference.” (M.P.E.P. §
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`2131.) Further, “[t]he identical invention must be shown in as complete detail as is
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`contained in the…claim.” Id. In other words, to anticipate a claim under 35
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`U.S.C. §102, a reference must teach exactly what is recited in the claim. As shown
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`below, because the cited references of Sony’s Grounds fail to teach exactly what is
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`recited in independent Claim 38, the references are not anticipatory under 35
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`U.S.C. §102.
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`Further, with respect to the challenges under 35 U.S.C. §103 (i.e., Grounds
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`A-C, F-H, and J), 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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`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 Sony’s 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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`the alleged prior art references do not support.2 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-1105 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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`Also in accordance with established principles, it is not the job of the Board
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`to fill in the blanks and correct inadequacies in an inter partes review petition.
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`(See, e.g., in the context of interference practice, S.O. ¶ 121.5.2 (which states that
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`2 The present discussion ident