Paper 14
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`
`
` Entered: September 24, 2013
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW
`UNIVERSITY OF JERUSALEM
`Patent Owner
`
`_______________
`
`Case IPR2013-00327 (SCM)
`Patent 7,477,284 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
` Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

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`Case IPR2013-00327
`Patent 7,477,284 B2
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`
`I. INTRODUCTION
`
`Petitioner, Sony Corporation, filed a petition requesting an inter partes review
`
`of claims 4, 7, and 38 of Patent No. US 7,477,284 B2 (the “’284 Patent” or Ex.
`
`1101). Paper 10 (“Pet.”). Patent Owner, Yissum Research Development Company
`
`of the Hebrew University of Jerusalem, filed a patent owner preliminary response.
`
`Paper 13 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a):
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Pursuant to § 314(a), the Board institutes an inter partes review of claims 4,
`
`7, and 38 of the ’284 Patent.
`
`Petitioner separately moved to join this proceeding with IPR2013-00219 (the
`
`“’219 proceeding”). Paper 4. In a separate decision entered today, we grant
`
`Petitioner’s motion and join this proceeding with the ’219 proceeding.
`
`A. Related Proceedings
`
`The ’284 Patent and another related patent, Patent No. US 6,665,003 B1 (the
`
`“’003 Patent” or Ex. 1103), are involved in litigation in the U.S. District Court for
`
`the District of Delaware. See Pet. 1 (citing HumanEyes Technologies Ltd. v. Sony
`
`Electronics Inc. et al., 1-12-cv-00398 (D. Del. March 29, 2012)). Petitioner
`
`describes the Delaware litigation as an infringement action currently based on at
`
`least claims 1-4, 7, 10, 20, 27-29, and 36-38 of the ’284 Patent. Paper 10, 2-3; see
`
`also Paper 11, 11. In addition to the ’219 proceeding, related inter partes review
`
`
`
`2
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`Case IPR2013-00327
`Patent 7,477,284 B2
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`proceedings before the Patent Trial and Appeal Board (the “Board”) involving the
`
`same parties and the related patent include IPR2013-00218 and IPR2013-00326.
`
`B. The ’284 Patent
`
`The ’284 Patent describes methods and apparatus for generating mosaics of
`
`a scene from image data of the scene and displaying the mosaics to provide a sense
`
`of depth. See Ex. 1101, Abstract, Figs. 3, 5. The ’284 Patent is described more
`
`fully in the IPR2013-00219 Decision to Institute, Paper 16 (Sept. 23, 2013) (the
`
`“’219 Decision”), in which the Board institutes inter partes review for claims 1-3,
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`5, 10, 20, 27-29, 36, and 37 in the ’284 Patent. For purposes of this Decision to
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`Institute (“Decision”), we adopt and rely upon the ’219 Decision, including the
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`description of the ’284 Patent in the ’219 Decision at 3-7.
`
`C. Claims
`
`Claims 4 and 7 depend from independent claim 1 via intervening claim 3.
`
`Independent claim 1 and dependent claim 3 (not challenged here), challenged
`
`claims 4 and 7, and challenged, independent claim 38 are reproduced below, with
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`some additional indentation and line spacing for clarity:
`
`1. Imaging apparatus comprising:
`
`at least one imager that moves relative to a scene so as to acquire a
`plurality of optical images of at least portions of the scene, each of at
`least two of said optical images being viewed from a different respective
`viewing position;
`
` a
`
` processor that receives image data representative of said at least two of
`the optical images and processes the data to divide each image into a
`plurality of segments and to generate a plurality of mosaics of the scene,
`such that:
`each mosaic contains segments taken from different ones of said
`optical images;
`segments relating to at least one part of the scene are derived from
`at least two optical images and appear in at least two mosaics;
`
`
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`3
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`Case IPR2013-00327
`Patent 7,477,284 B2
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`
`the different segments of the two optical images in a given mosaic
`represent different parts of the scene; and
`
`a display that receives a plurality of the mosaics and displays them so as
`to provide a sense of depth of the scene.
`
`3. Imaging apparatus according to claim 1 and comprising communication
`apparatus that transmits image data from the imaging apparatus.
`
`4. Imaging apparatus according to claim 3 wherein the communication
`apparatus is housed in a housing that also accommodates the at least one
`imager, the processor and the display.
`
`7. Imaging apparatus according to claim 3 wherein the communication
`apparatus comprises [an] apparatus for transmitting the data over a wireless
`communication channel.
`
`38. A method for processing image data representative of at least portions
`of a scene acquired by at least one imager that moves relative to a scene so
`as to acquire a plurality of optical images of the scene, each of at least two of
`said optical images being viewed from a different respective viewing
`position, the method comprising:
`
`
`dividing each image into a plurality of segments and generating a plurality
`of mosaics of the scene, such that:
`
`each mosaic contains segments taken from different ones of said optical
`images;
`
`
`segments relating to at least one part of the scene are derived from at least
`two optical images and appear in at least two mosaics;
`
`the different segments of the two optical images in a given mosaic
`represent different parts of the scene; and
`
`in respect of any two of said optical images that both contribute at least
`two different segments to each of any two mosaics, the segments
`contributed by both optical images to a first one of the mosaics are all to
`the left of the segments contributed by both optical images to a second
`
`
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`4
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`Case IPR2013-00327
`Patent 7,477,284 B2
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`
`one of the mosaics; and
`
`displaying a plurality of the mosaics so as to provide a sense of depth of
`the scene.
`
`
`D. References Relied Upon
`
`Petitioner relies upon the following references:
`
`
`
`Berger
`Allen
`Chen
`
`
`July 11, 1922
`
`US 1,422,527
`
`Apr. 7, 1998
`
`US 5,737,491
`
`US 2001/0010546 A1 Aug. 2, 2001
`(filed Sep. 26, 1997)
`June 21, 1996
`
`
`JP H08-159762 A
`
`Ex. 1109
`Ex. 1108
`Ex. 1107
`
`Ex. 11102
`
`Asahi1
`
`U.V. Heleva, State of the Art in Digital Photogrammetric Workstations,
`12(2) THE PHOTOGRAMMETRIC JOURNAL OF FINLAND 65 (1991)3 (Ex. 1112,
`hereinafter “Heleva”);
`
`Ishiguro et al., Acquiring Omnidirectional Range Information, 23(4)
`SYSTEMS AND COMPUTERS IN JAPAN 47 (1992) (Ex. 1106, hereinafter “Ishiguro”);
`and
`
`
`Kawakita et al.,4 Generation of Panoramic Stereo Images from Monocular
`Moving Images, SIG-CYBERSPACE ,VIRTUAL REALITY SOCIETY OF JAPAN (VRSJ)
`RESEARCH REPORT, 2(1) VP GAKU KENPO , ISSN 1343-0572, VCR 97-11 (Nov.
`27, 1997) (Ex. 1104, hereinafter “Kawakita”).
`
`
`
`1 Aero Asahi Corporation is the named applicant of this Japanese patent
`application, and we refer to this reference hereinafter as “Asahi.”
`2 Unless otherwise noted, all citations to this reference refer to a certified English
`translation (Ex. 1111).
`3
` Cited copy date stamped March 24, 1992.
`4 Unless otherwise noted, all citations to this reference refer to a certified English
`translation (Ex. 1105).
`
`
`
`5
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`E. The Asserted Grounds
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`Petitioner asserts the following grounds of unpatentability under 35 U.S.C.
`
`§§ 102 and 103:
`
`Claims 4 and 7 as unpatentable under 35 U.S.C. § 103(a) over Kawakita,
`
`Chen, and Allen (Pet. 17-26);
`
`Claims 4 and 7 as unpatentable under 35 U.S.C. § 103(a) over Chen and
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`Allen (id. at 26-31);
`
`Claim 4 and 7 as unpatentable under 35 U.S.C. § 103(a) over Ishiguro,
`
`Chen, and Allen (id. at 31-38);
`
`Claim 38 as anticipated under 35 U.S.C. § 102(a) by Kawakita (id. at 38-40);
`
`Claim 38 as anticipated under 35 U.S.C. § 102(e) by Chen (id. at 40-41);
`
`Claim 38 as unpatentable under 35 U.S.C. § 103(a) over Ishiguro (id. at 41-
`
`43);
`
`Claim 38 as unpatentable under 35 U.S.C. § 103(a) over Ishiguro and Chen
`
`(id. at 43-44);
`
`Claim 38 as unpatentable under 35 U.S.C. § 103 over Ishiguro and Berger
`
`(id. at 44-45);
`
`Claim 38 as anticipated under 35 U.S.C. § 102(b) by Asahi (id. at 45-48);
`
`and
`
`Claim 38 as unpatentable under 35 U.S.C. § 103(a) over Asahi and Heleva
`
`(id. at 48-50).
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
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`it appears.” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012) (Claim Construction).
`
`Petitioner and Patent Owner propose several definitions for various claim
`
`terms. For purposes of this Decision, the Board adopts and relies upon the claim
`
`constructions outlined in the ’219 Decision at 10-19.
`
`Unlike claims 4 and 7 and the claims challenged in the ’219 proceeding,
`
`independent claim 38 is a method claim. Referring to claim 38, Petitioner
`
`proposes to construe the term “displaying” to mean “presenting an image for
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`viewing.” Pet. 16. This construction is overly broad. The claim language recites
`
`the step of “displaying a plurality of the mosaics so as to provide a sense of depth
`
`of the scene” (emphasis added). Petitioner notes that embodiments disclosed in the
`
`Specification of the ’284 Patent include “displaying an image with ‘glasses with
`
`lenses of different colors, glasses with lenses of opposite polarizations, [and]
`
`alternatively displaying at least two images of a stereoscopic image set sufficiently
`
`rapidly so that depth can be viewed.’” Id. (quoting Ex. 1101, col. 13, ll. 1-10
`
`(emphasis added)); see also Ex. 1101, col. 8, ll. 6-20. Nevertheless, “limitations
`
`are not to be read into the claims from the specification.” In re Van Geuns, 988
`
`F.2d 1181, 1184 (Fed. Cir. 1993). The language of claim 38 is not limited to the
`
`use of any particular viewing apparatus, such as polarized or colored lenses.
`
`Accordingly, presenting an anaglyph print capable of providing a sense of depth to
`
`a viewer wearing glasses with lenses of different colors is merely one example of
`
`“displaying,” as recited in claim 38. Thus, for purposes of this decision, we
`
`construe “displaying” to mean displaying images, such that a sense of depth of the
`
`scene is provided to viewers, with and without the assistance of viewing devices,
`
`such as polarized or colored lenses.
`
`
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`
`B. Asserted Grounds of Unpatentability
`
`1. Kawakita – Anticipation, Claim 38
`
`a.
`
`Public Dissemination
`
`Patent Owner challenges the prior art status of Kawakita, in particular, its
`
`public accessibility prior to the effective filing date of the ’284 Patent. See Prelim.
`
`Resp. 18-20. Petitioner presents declaration evidence that the original Japanese
`
`version of Kawakita was published at a conference and available thereafter, with
`
`an English abstract and title, as part of a five-article booklet, entitled “Virtual
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`Reality Society [(“VRS”)] of Japan Research Report.” See Pet. 50-53; Ex. 1116
`
`¶¶ 7-9. The ’284 Patent is a continuation-in-part of U.S. Patent Application
`
`No. 09/396,248, filed September 16, 1999, that issued as the ’003 Patent.5 Prelim.
`
`Resp. 10, Ex. 1101, col. 1, ll. 6-11. Patent Owner argues that “the interested
`
`members of the public would not be able to locate [Kawakita] prior to the priority
`
`date of the ’003 patent.” Prelim. Resp. 19-20.
`
`For purposes of this Decision, the Board adopts and relies upon the analysis
`
`of this same public accessibility issue presented in the IPR2013-00218 Decision to
`
`Institute, Paper 16 (Sept. 23, 2013) (the “’218 Decision”) at 12-17. See also ’219
`
`Decision at 19-20. For the reasons set forth in that discussion, we determine that
`
`Petitioner has established a reasonable likelihood of prevailing on the issue of
`
`whether Kawakita was accessible publically prior to the effective filing date of the
`
`’284 Patent.
`
`
`5 Petitioner does not dispute that the challenged claims of ’284 Patent are entitled
`to the filing date of the ’003 Patent. We note, however, that the disclosure of
`the’003 Patent differs from that of the ’284 Patent, and that the patents name
`different inventive entities. Nevertheless, because Petitioner does not challenge
`Patent Owner’s claim to the benefit of the earlier filing date, for purposes of this
`Decision, we treat the challenged claims of ’284 Patent as entitled to the benefit of
`the filing date of the ’003 Patent.
`
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`b.
`
`Claim 38
`
`Petitioner contends that “Kawakita discloses every step of claim 38 and
`
`discloses the same stereoscopic image generation technique as the technique
`
`described in the ’284 Patent.” Pet. 38. Petitioner reads the elements of
`
`independent claim 38 of the ’284 Patent on the disclosure of Kawakita. Id. at 38-
`
`40. In response, Patent Owner focuses on claim 1 of the ’284 Patent, addressed in
`
`the ’219 Decision, and which Patent Owner correctly notes is similar to claim 38 at
`
`issue here. Prelim. Resp. 25-31 (“Claims 4 and 7 depend from Claim 1, and
`
`therefore include the same elements. Independent Claim 38 recites similar
`
`elements.”) Therefore, in response to the arguments here directed to claim 38, the
`
`Board hereby adopts and relies upon the discussion of anticipation of independent
`
`claim 1 by Kawakita that appears in the ’219 Decision at 20-25.
`
`Patent Owner does not present separate arguments to distinguish
`
`independent claim 38 over Kawakita. Patent Owner makes the same or
`
`substantially similar arguments here as those made in the ’219 proceeding. In
`
`particular, as with the arguments presented in the ’219 proceeding, Patent Owner’s
`
`arguments here are directed solely to alleged deficiencies in Kawakita with respect
`
`to independent claim 1, and Patent Owner does not contest separately the reading
`
`of the specific elements in challenged claim 38 on the disclosure of Kawakita.
`
`Thus, we are persuaded that Petitioner shows that Kawakita discloses the recited
`
`elements in claim 38, which are similar to those recited in claim 1. See Pet. 38-40.
`
`Pursuant to the foregoing discussion, Petitioner establishes a reasonable likelihood
`
`of prevailing on the ground of unpatentability of claim 38 as anticipated by
`
`Kawakita.
`
`
`
`
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`2. Kawakita, Chen, and Allen–Obviousness, Claims 4 and 7
`
`Petitioner contends that “Kawakita discloses every step of claim 1 and
`
`discloses the same stereoscopic image generation technique as the technique
`
`described in the ’284 Patent.” Pet. 17. With the exception of the “processor” and
`
`the “display,” Petitioner reads the limitations of independent claim 1 of the ’284
`
`Patent on the disclosure of Kawakita. Id. at 17-20. Petitioner further contends
`
`that, to the extent that the “processor” and the “display” are not disclosed
`
`inherently in Kawakita, those limitations are disclosed in Chen, and that it would
`
`have been obvious to a person of ordinary skill in the relevant art to modify
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`Kawakita in view of Chen to teach or suggest those limitations. Id. at 21-22, 24-
`
`25; see also ’219 Decision at 26-27.
`
`Petitioner then contends that the limitations of intervening claim 3 and of
`
`challenged, dependent claims 4 and 5 are taught or suggested by the disclosure of
`
`Allen. Pet. 22-23. Referring to claim 3, Petitioner contends that Allen discloses a
`
`“transceiver 32 for transmitting the digital images, and control signals to the image
`
`fulfillment server 34.” Id. at 22 (quoting Ex. 1108, col. 2, ll. 48-51). Referring to
`
`claim 4, Petitioner contends that Allen’s “communication apparatus” may
`
`comprise transceiver 32 included within the housing of a camera and that
`
`transceiver 32 also accommodates an imager, i.e., image sensor 14, and a
`
`processor, i.e., microprocessor 20. Pet. 23 (citing Ex. 1108, col. 2, ll. 48-51; Fig.
`
`1). Similarly, referring to claim 7, Petitioner contends that Allen teaches that the
`
`“communication apparatus” comprises an apparatus for transmitting data over a
`
`wireless communication channel. Pet. 23. In particular, Allen teaches that
`
`wireless transceiver 32 may transmit digital images and control signals to image
`
`fulfillment server 34 over a wireless communication system, such as a cellular
`
`telephone or digital wireless communication system. Id. (citing Ex. 1108, col. 2,
`
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`ll. 35-41; col. 3, ll. 5-8; Fig. 1). Finally, Petitioner contends that a person of
`
`ordinary skill in the relevant art would have reason to combine the teachings of
`
`Allen with those of Kawakita and Chen to achieve the inventions recited in claims
`
`4 and 7, because, “if a technique has been used to improve one device, and a
`
`person of ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.” Pet. 25-26 (quoting KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 417 (2007)).
`
`In response, Patent Owner focuses on independent claim 1 of the ’284
`
`Patent, a subject of the ’219 Decision, the limitations of which, Patent Owner
`
`correctly notes, are incorporated into dependent claims 4 and 7 at issue here.
`
`Prelim. Resp. 25-31. The Board hereby adopts and relies upon the discussion of
`
`the obviousness of claim 1 over Kawakita and Chen that appears in the ’219
`
`Decision at 26-27.
`
`Patent Owner does not present separate arguments to distinguish either claim
`
`4 or claim 7 over Kawakita, Chen, and Allen. Patent Owner makes the same or
`
`similar arguments here to those made in the ’219 proceeding. In particular, as with
`
`the arguments presented in the ’219 proceeding, Patent Owner’s arguments here
`
`are directed solely to alleged deficiencies in Kawakita with respect to independent
`
`claim 1. Patent Owner does not contest separately that the combined references
`
`teach or suggest the specific limitations of challenged claims 4 and 7. Thus, we are
`
`persuaded that Petitioner shows that Kawakita, Chen, and Allen disclose the
`
`additional recited limitations in claims 4 and 7, which are similar to those recited in
`
`claim 3. See Pet. 17-27. Pursuant to the foregoing discussion, Petitioner
`
`establishes a reasonable likelihood of prevailing on the ground of unpatentability
`
`of claims 4 and 7 as rendered obvious over Kawakita, Chen, and Allen.
`
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`3. Remaining Asserted Grounds of Unpatentability
`
`Patent Owner asserts additional grounds of unpatentability with respect to
`
`claims 4, 7, and 38, as listed above in Section I.E. Those additional grounds are
`
`denied because the references relied upon are redundant as to the claims for which
`
`inter partes review is instituted and in light of the determination that there is a
`
`reasonable likelihood that the challenged claims are unpatentable based on the
`
`particular grounds of unpatentability, discussed above. See 37 C.F.R.
`
`§ 42.108(a).
`
`III. CONCLUSION
`
`Petitioner demonstrates a reasonable likelihood of prevailing on the
`
`following grounds of unpatentability of the ’284 Patent: a) anticipation of claim 38
`
`by Kawakita; and b) obviousness of claims 4 and 7 over Kawakita, Chen, and
`
`Allen.
`
`In consideration of the foregoing, it is hereby
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 4, 7, and 38 of the ’284 Patent for the following
`
`grounds of unpatentability:
`
`1. Claim 38 for anticipation by Kawakita; and
`
`2. Claims 4 and 7 for obviousness over Kawakita, Chen, and Allen;
`
`FURTHER ORDERED that no other grounds of unpatentability set forth in
`
`the petition are authorized for the inter partes review;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial that will commence on the
`
`entry date of this decision; and
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`FURTHER ORDERED that, in light of the joinder of this trial with the
`
`’219 proceeding, the Scheduling Order (Paper 17) and time for the initial
`
`conference call in the ’219 proceeding shall set forth the schedule and initial
`
`conference call for the joined trial. Thus, the initial conference call with the Board
`
`is scheduled for both proceedings for 2:00 PM EDT on Wednesday, October 23,
`
`2013. The parties are directed to the Office Trial Practice Guide, 77 Fed. Reg. at
`
`48765-66 for guidance in preparing for the initial conference call, and should be
`
`prepared to discuss any proposed changes to the Scheduling Order entered in the
`
`’219 proceeding and any motions the parties anticipate filing during the trial.
`
`
`FOR PETITONER:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`whanley@kenyon.com
`mccarniaux@kenyon.com
`
`FOR PATENT OWNER:
`
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`
`
`13