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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`UBISOFT ENTERTAINMENT SA,
`Petitioner
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`v.
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`PRINCETON DIGITAL IMAGE CORPORATION,
`Patent Owner
`____________
`
`Case No. IPR2014-00635
`Patent 5,513,129
` ____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`TABLE OF CONTENTS
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`
`CONTROL SIGNAL HAVING MUSIC AND/OR CONTROL INFORMATION GENERATED IN
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`ANALOG FORM, AND PROCESSING SAID MUSIC SIGNAL TO PRODUCE CONTROL
`INFORMATION FOR MODIFICATION OF OBJECTS IN THE VIRTUAL ENVIRONMENT” (CLAIM
`
`TABLE OF CONTENTS ............................................................................................................. 2  
`I.  
`INTRODUCTION .................................................................................................................. 1  
`II.   CLAIM CONSTRUCTION .................................................................................................. 1  
`A.   “MEANS FOR SUPPLYING A FIRST SIGNAL SELECTED FROM A GROUP CONSISTING OF A
`RESPONSE TO A MUSIC SIGNAL …” (CLAIM 12) ................................................................. 2  
`B.   “MEANS FOR RECEIVING THE FIRST SIGNAL AND INFLUENCING ACTION WITHIN A VIRTUAL
`ENVIRONMENT IN RESPONSE TO SAID FIRST SIGNAL” (CLAIM 12) ...................................... 4  
`C.   “ANALYSIS APPARATUS HAVING MEANS FOR RECEIVING SAID MUSIC SIGNAL IN DIGITAL OR
`13) ..................................................................................................................................... 5  
`D.   “MEANS FOR PRERECORDING A CONTROL TRACK HAVING MUSIC AND/OR CONTROL
`CORRESPONDING TO AN AUDIO SIGNAL” (CLAIM 22) ......................................................... 6  
`E.   “MEANS FOR PRODUCING THE VIRTUAL ENVIRONMENT IN RESPONSE TO SAID
`PRERECORDED CONTROL TRACK” (CLAIM 16) ................................................................... 7  
`F.   “MEANS FOR SUPPLYING THE MUSIC SIGNAL TO THE MEANS FOR PRODUCING THE VIRTUAL
`ENVIRONMENT” (CLAIM 18) .............................................................................................. 7  
`III.   LYTLE ANTICIPATES CLAIMS 5-7, 9-12, 16-18, 22, AND 23 ...................................... 8  
`IV.   ADACHI ANTICIPATES CLAIMS 1, 12, 13, 15, AND 21 ............................................. 10  
`V.   TSUMURA ANTICIPATES CLAIMS 10 AND 11 .......................................................... 11  
`VI.   THE CHALLENGED CLAIMS ARE OBVIOUS OVER LYTLE IN VIEW OF
`ADACHI UNDER 35 U.S.C. § 103(A) ............................................................................... 12  
`VII.  THE CHALLENGED CLAIMS ARE OBVIOUS OVER THALMANN IN VIEW OF
`WILLIAMS UNDER 35 U.S.C. § 103(A) .......................................................................... 13  
`VIII.   CONCLUSION ............................................................................................................. 15  
`
`INFORMATION CORRESPONDING TO A MUSIC SIGNAL” (CLAIM 16) AND “MEANS FOR
`PRERECORDING A CONTROL TRACK HAVING AUDIO AND/OR CONTROL INFORMATION
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`

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`I.
`
`INTRODUCTION
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`IPR2014-00635
`U.S. Patent No. 5,513,129
`
`
`In an attempt to avoid the prior art references in this proceeding, Patent Owner
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`(“PO”) has improperly narrowed various “means plus function” terms by encompassing
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`numerous components that are not in any way necessary to perform the recited
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`functions. The prior art references teach all of the properly construed limitations of the
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`challenged claims as set forth in the Petition and as discussed below.
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`II. CLAIM CONSTRUCTION
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`Words of the claims “are generally given their ordinary and customary
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`meaning” as understood by a person of ordinary skill in the art at the time of the
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`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005). When a
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`limitation invokes 35 U.S.C. §112, ¶6 (now §112(f)) claim terms are construed to
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`include the structure, material, or acts described in the specification corresponding to
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`the recited function. 35 U.S.C. §112 (now §112(f)); see also In re Donaldson Co., Inc., 16
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`F.3d 1189, 1193, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994) (en banc). It is improper,
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`however, to “incorporate structure from the written description beyond that necessary
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`to perform the claimed function.” Micro Chemical, Inc. v. Great Plains Chemical Co., Inc.,
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`194 F.3d 1250, 1258 (Fed. Cir. 1999); see also Northrop Grumman Corp. v. Intel Corp., 325
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`F.3d 1346, 1352 (Fed. Cir. 2003) (“Features that do not perform the recited function
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`do not constitute corresponding structure and thus do not serve as claim
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`limitations.”). Further, when alternative structures are described in the specification
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`1
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`

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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`for a particular function, the claim is construed to encompass and be satisfied by any
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`of those structures. Serrano v. Telular Corp., 111 F.3d 1578, 1583 (Fed. Cir. 1997).
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`PO violates these basic tenets of claim construction.1 Specifically, PO proffers
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`“structure” for “means plus function” terms that include numerous unnecessary
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`components. As demonstrated below, the constructions set forth in the Petition are
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`correct and application of those constructions to the prior art renders the Challenged
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`Claims anticipated and/or obvious.
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`A.
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`“means for supplying a first signal selected from a group consisting
`of a control signal having music and/or control information
`generated in response to a music signal …” (Claim 12)
`The parties dispute the structure required to perform the claimed function of
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`this limitation. See e.g., PO Response (Paper 14, “Resp.”) at 11-14; see also e.g., Petition
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`(Paper 3, “Pet.”) at 5-7. First, PO identifies the corresponding structure as all
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`components of Fig. 6 that are inputs to VR system 250 and VR display 260. PO’s
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`proposed structure includes numerous elements that are not necessary to perform any
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`of the recited functions. For example, PO identifies multichannel audio digitizer 245,
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` PO also points to certain deposition testimony of Petitioner’s expert Mr. Pope to
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` 1
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`support its overly narrow “means plus function” constructions. However, the record
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`is clear that Mr. Pope never conducted a means plus function claim construction
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`analysis, and does not know the legal standard for doing so. See e.g., Ex. 2004 [Pope
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`Dep. Tr.] at 67:25–69:5, 21:22–22:10. In determining whether the prior art references
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`2
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`

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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`sound processor 205, microphone 248, and audio amplifier 210 as necessary structure.
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`However, the ‘129 patent specifically states that these components are not necessary.
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`Ex 1001, ‘129 patent at 19:20-22 (“Sound processing equipment (such as sound
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`processor 205 shown in FIG. 6) can optionally be connected between audio source
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`200 and amplifier 210.”)2; 19:15-19 (“VR system 250 of FIG. 6 can play digitized
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`music (e.g., generate original music), rather than merely routing digitized music from
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`an external source (e.g., digitizer 245 of FIG. 6).”); 17:13-22 (“The VR system receives
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`three signals: … digitized audio signals 246 that digitally represent the original audio
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`(which is typically music), and/or any other audio source desired, such as a live
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`microphone 248.”); 10:51-65 (disclosing that where “the VR computer has digital-to-
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`analog audio capabilities,” an audio amplifier is unnecessary); see also Ex. 1013,
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`Madisetti Decl. at ¶19. Further, Fig. 6 “describe[s] a principally analog device, which can
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`easily be implemented digitally, in alternative embodiments of the invention.” Id. at
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`20:32-34. In the digital “alternative embodiment,” tape IF converters and digitizers are
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`not necessary for supplying a first signal. Ex. 1013, Madisetti Decl. at ¶20.
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`The specific function in question is “supplying a first signal . . .” The only
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` 2
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` Despite reading this passage, PO’s expert still contends that a sound processor is
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`required, calling into question Mr. Kesan’s credibility. Ex. 1012, Kesan Tr. at 87:16-
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`89:22.
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`3
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`necessary structure for performing this function with reference to Fig. 6 is a music
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`source 200 that provides an audio signal (optionally including a control track) and a
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`microprocessor 240. Ex. 1013, Madisetti Decl. at ¶21. As further confirmation that
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`these are the only necessary components for the claimed function, the same structure
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`(music source 1 and analyzer 3) also is described in the “preferred embodiment” of
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`Fig. 1. Id. Indeed, PO’s expert agreed that the music source and analyzer of Fig. 1
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`were capable of providing control signals having music and/or control information
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`generated in response to a music signal and in response to a prerecorded control
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`track. Ex. 1012, Kesan Tr. at 50:23-51:4; see also id at 51:13-18. PO’s expert also
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`testified that the prerecorded control tracks could be provided directly to the VR
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`processor. Id. at 51:21-23. Consequently, Petitioner’s originally proposed structure (“a
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`general purpose processor (also referred to as an analyzer) and/or a music source”)
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`should be adopted by the Board.
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`B.
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`“means for receiving the first signal and influencing action within a
`virtual environment in response to said first signal” (Claim 12)
`The parties agree as to the function of this limitation, but differ with respect to
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`the required structure. See e.g., Resp. at 14-15; see also e.g., Pet. at 7-8. Here again, PO
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`includes structure that is not necessary to perform the function, arguing that the
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`required structure is “a virtual reality system connected to the microprocessor and
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`outputting video signals and a virtual reality display connected to the virtual reality
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`system.” Resp. at 14. The principal dispute here is that a “virtual reality display” is not
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`4
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`a necessary structure for this “receiving the first signal” limitation. PO’s expert
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`acknowledges that it is the VR processor that receives a “first signal” and generates
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`the virtual environment, such as by creating, destroying, moving, and modifying
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`objects (i.e., influencing action), in response the “first signal.” Ex. 1012, Kesan Tr. at
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`52:19-53:10, 106:20-107:24. It is not the virtual reality display that receives a first
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`signal selected from the group of disclosed first signals. Additionally, a display is not
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`required to “influence action within a virtual environment in response to said first
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`signal.” Ex. 1013 [Madisetti Decl.] at ¶24. The only disclosed structure necessary to
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`perform the stated function is a general-purpose computer (i.e., VR Processor 7 from
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`Fig. 1 or VR System 250 from Fig. 6). Id. at ¶¶23-25. As such, Petitioner’s
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`construction should be adopted.
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`C.
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`“analysis apparatus having means for receiving said music signal in
`digital or analog form, and processing said music signal to produce
`control information for modification of objects in the virtual
`environment” (Claim 13)
`As with claim 12, PO identifies numerous components from Fig. 6 that are not
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`necessary for performing the claimed functions. Resp. at 16. As depicted in Figs. 1, 2,
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`and 4, the only necessary structure for receiving a music signal in analog form is A-to-
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`D converter 4. Ex. 1013, Madisetti Decl. at ¶¶27-29; Pet. at 8-9. No similar structure
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`is required if the music source is digital. Id. With respect to the function of
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`“processing said music signal,” PO seems to agree the necessary structure is a general
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`purpose “microprocessor” such as analyzer 5 or microprocessor 240. Petitioner’s
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`5
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`

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`proposed construction should be adopted.
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`
`D.
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`“means for prerecording a control track having music and/or control
`information corresponding to a music signal” (claim 16) and “means
`for prerecording a control track having audio and/or control
`information corresponding to an audio signal” (Claim 22)
`Fig. 5 describes the process of prerecording a control track. However, as noted
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`in the Petition, Fig. 5 encompasses multiple disclosed structural embodiments, any of
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`which can perform these claimed functions. Pet. at 9-10. For example, where
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`prerecording a control track is performed by a human operator creating control
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`signals via
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`input switches, the only structure required
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`is a user
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`input, a
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`microprocessor, and a data storage device. ‘129 Patent at 15:17-24, 16:8-29, 18:49-56;
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`Pet. at 10; see also Ex. 1013, Madisetti Decl. at ¶¶31-34. The ‘129 Patent discloses that
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`user input can be via “digital switches 150 or analog controls 160.” The ‘129 Patent
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`further discloses that a user can input control information from “a disk drive 165 or
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`other type of electronic data storage and retrieval mechanism or directly by a
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`computer system.” Ex. 1001, ‘129 Patent at 16:16-25. In the later case, “[s]uch
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`information may be created in a multiple of ways including paint programs, 3D
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`modeling programs, digitizing scanners and so on.” Id. at 16:22-27. The ‘129 Patent
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`further discloses that the recording device may be an audio magnetic tape (id. at 13:45-
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`49), video game cartridge (id. at 8:62-65), CD (id. at 11:65-12:2, 20:10-13), Digital
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`Audio Tape (id. at 20:10-13), or other format (id. at 20:13-25). Pet. at 8-9; see also Ex.
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`1012, Kesan Tr. at 83:9-84:4. Any of these structures satisfy this limitation. Serrano v.
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`
`
`6
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`

`

`Telular Corp., 111 F.3d at 1583.
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`E.
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`“means for producing the virtual environment in response to said
`prerecorded control track” (Claim 16)
`PO contends that almost all of the structures of Fig. 6 except the VR System
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`250 “produce the virtual environment in response to said prerecorded control track.”
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`Resp. at 20-21. PO provides no explanation for how or why any of the identified
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`structures perform the claimed function. The only disclosed structure that performs
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`the function of “producing the virtual environment” is VR Processor 7 or VR System
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`250, both general purpose computers. Ex. 1013, Madisetti Decl. at ¶¶36-39. See also
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`Ex. 1001, ‘129 Patent at 8:43-44 (processor 7 “generat[es] the virtual environment”
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`using the control signals). Even its expert recognized the same. Ex. 1012, Kesan Tr. at
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`52:19-53:10, 106:20-107:24. Petitioner’s proposed construction should be adopted.
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`F.
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` “means for supplying the music signal to the means for producing
`the virtual environment” (Claim 18) and “means for supplying the
`audio signal to the processor” (Claim 23)
`PO again improperly recites structure that is not necessary to perform the
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`claimed function of supplying the music or audio signal. Importantly, PO identifies
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`numerous structures as necessary for both the means for supplying the music signal
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`and the means for producing the virtual environment. PO also identifies completely
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`different structures for performing the functions recited in claims 18 and 23, which
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`are nearly identical. Resp. at 21-24. With respect to claim 18, a sound processor and
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`audio amplifier are optional aspects of the invention (see Section II.A above) and
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`7
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`

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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`wholly unnecessary for supplying a music signal to the VR Processor (i.e., means for
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`producing). Ex. 1001, ‘129 patent at Fig. 6; see also Ex. 1013, Madisetti Decl. at ¶41.
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`With respect to claim 23, PO looks to a figure of the ‘129 patent other than Figs. 5
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`and 6 for the first time and acknowledges that the ‘129 patent contemplates that
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`converters may not be necessary. Resp. at 22-24. However, PO fails to acknowledge
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`that, even in Fig. 1, there is a direct connection between the music source and the VR
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`Processor. Ex. 1001, ‘129 patent at Fig. 1. As PO is importing structure that is not
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`required to perform the claimed functions, its constructions should be rejected and
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`Petitioner’s should be adopted because the only structure necessary is a music source
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`and general purpose computer. Ex. 1013, Madisetti Decl. at ¶¶41-42, 44-45.
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`III. LYTLE ANTICIPATES CLAIMS 5-7, 9-12, 16-18, 22, AND 23
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`PO does not present any rationale with respect to claims 12, 16, 18, 22 and 23
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`(i.e., “means plus function” claims) other than that these limitations “contain many
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`more components than those mentioned by the Petitioner.” See Resp. at 27, 28, 29,
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`30, 31. The basis for this statement is PO’s faulty means plus function claim
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`construction analysis, as explained above. Applying the proper claim construction
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`analysis, as described in the Petition (Paper 3 at 22-33) and herein, eliminates PO’s
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`argument in these respects.
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`PO further argues that Lytle does not disclose generating a virtual environment or
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`operating a virtual reality computer system because “there is no mention in Lytle of a
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`
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`8
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`user entering a virtual environment or changing a viewpoint of a displayed video” and
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`“there is no indication in Lytle that the displayed video would change to match a
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`corresponding change in a user’s perspective.” Resp. at 31-35. However, such a narrow
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`interpretation of a “virtual environment” is inconsistent with the ‘129 patent
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`specification. Ex. 1001, ‘129 Patent at 1:34-35, 8:7-13 (a “virtual environment” may be
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`displayed on a non-stereoscopic, two-dimensional display on a flat screen); 12:17-26,
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`18:16-56, Fig. 11 (the embodiments of the ‘129 patent, for example, pertain to analyzing
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`music and controlling the virtual environment of a dancer dancing, displaying cylinders
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`that change height in response to the control track and displaying lyrics together with the
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`word vocalized in a song). In light of these teachings, the Board noted that Lytle’s
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`“graphical animation concerts appear to have ‘a perspective similar to what a person’s
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`avatar would see through their own eyes, if they were playing the animated instrument
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`objects” and that such an environment falls within the meaning of a “virtual
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`environment” in the ‘129 patent. Institution Decision (Paper 9, “Inst. Dec.”) at 14-15; see
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`also Pet. at 24-25. Lytle teaches a virtual environment.
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`In one last attempt to rescue its claims, PO contends that Petitioner “improperly
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`picks and chooses different features of different embodiments from Lytle in its
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`anticipation argument.” Resp. at 36-38. Petitioner never suggested merging components
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`from two systems as PO contends. Petitioner consistently relied and continues to rely on
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`the system of Fig. 199 in Lytle. Petitioner merely referenced the fact that Lytle indicated
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`
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`9
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`that his system could be carried out on a single computer. Pet. at 24. However, since
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`claim 5 “does not require that a single machine handle music input and graphic
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`applications,” whether or not the Fig. 199 system in Lytle can be performed on a single
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`machine is irrelevant. See Inst. Dec. at 15. Indeed, the ‘129 patent itself contemplates
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`various distinct components for “prerecording” and for “operating the virtual reality
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`computer.” See, e.g., Ex. 1001 at Figs. 1, 5 and 6. For these reasons, the challenged claims
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`are anticipated by Lytle and should be cancelled.
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`IV. ADACHI ANTICIPATES CLAIMS 1, 12, 13, 15, AND 21
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`PO contends that Adachi does not disclose all of the components identified by
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`its expert for performing the function of “supplying a first signal” as recited in claim
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`12. As demonstrated above, PO’s expert’s means plus function analysis was
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`fundamentally flawed and should be disregarded. Applying the proper construction
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`of the structure necessary to perform this function, as described above, it is clear that
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`Adachi teaches this limitation. See Pet. at 35-36.
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`Additionally, PO argues that Adachi does not disclose its narrow interpretation of
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`a “virtual environment” because it “does not generate a display from the user’s first
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`person perspective from any audio or control signal” and “there is no disclosure in
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`Adachi that the perspective changes with or corresponds to a user’s first-person
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`perspective.” Resp. at 40-44. However, as discussed above with respect to Lytle, this is
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`not required by the ‘129 patent or the Board’s construction. Rather, as explained by
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`
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`10
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`Petitioner’s expert, “the ‘129 patent … sets a fairly low threshold for what is to be
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`considered immersion and interaction.” Ex. 2004, Pope Tr. at 58:4-9; see also Ex. 1007,
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`Pope Decl. at ¶ 24.3
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`Adachi provides a “virtual environment” by providing a view similar to what a
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`person would see through his or her own eyes on a “three-dimensional image display unit
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`such as a stereoscopic television.” Ex. 1004, Adachi at 5:41-42. The “sense of distance
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`between the object and/or the background image is controlled or the mutual relation
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`between the object and the background is changed based on three-dimensional image
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`control.” Id. at 5:44-56. A similar description is found in the ‘129 patent. See Ex. 1001,
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`‘129 patent at 18:56-19:11. For these reasons, Adachi discloses generating and operating a
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`virtual environment and the challenged claims should be cancelled.
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`V. TSUMURA ANTICIPATES CLAIMS 10 AND 11
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`PO provides little argument with respect Tsumura’s anticipation of claims 10
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`and 11 other than conclusory, unsupported statements of its expert. Response at 44-
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`
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` 3
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` Petitioner submits that Mr. Pope’s opinions with respect to the term “virtual environment”
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`should be given greater weight than that of PO’s expert because he has substantial
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`experience in virtual reality, whereas PO’s expert had none at the time of the invention.
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`Compare Ex. 1007, Pope Decl. (detailing VR experience) with Ex. 1012, Kesan Tr. at 150:19-
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`21, 151:6-8 (no experience with virtual reality)
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`
`
`11
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`45. However, as demonstrated in the Petition, Tsumura teaches that prerecorded
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`music and vocal data are supplied to a computer system that changes a display based
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`on the processed music and vocal data. Pet. at 17-21 (claim elements 1(b), 5(b) and
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`10(b)). As recognized by the Board, this teaching anticipates claims 10 and 11. Inst.
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`Dec. at 12. Without any evidence or reasoning to establish otherwise, the claims
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`should be canceled.
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`VI. THE CHALLENGED CLAIMS ARE OBVIOUS OVER LYTLE IN
`VIEW OF ADACHI UNDER 35 U.S.C. § 103(A)
`
`PO argues that the combination of Lytle and Adachi does not teach or suggest
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`the limitations relating to a “virtual environment,” a “virtual reality computer system,”
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`or all of the many components identified by its expert as the structure corresponding
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`to the function of “supplying a first signal selected from a group consisting of a control
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`signal having music and/or control information generated in response to a music
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`signal…” found in claim 12. Resp. at 46-51. As described above, PO’s claim
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`construction of the structure for “supplying a first signal” is fundamentally flawed
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`and, as result, should be disregarded. Applying a proper construction of the structure
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`associated with this function, it is clear that Lytle in view of Adachi teaches this
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`limitation. With respect to these references teachings of a “virtual environment,”
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`Petitioner refers to the discussions above. See also Pet. at 46-50.
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`As indicated in the Petition, a person of ordinary skill in the art would have
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`been motivated to combine Lytle with the specific type of processing of music signals
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`
`
`12
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`disclosed in Adachi. Pet. at 47; see also Ex. 1007, Pope Decl. at ¶¶57-59. This fact does
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`not appear to be disputed by PO. Claims 1, 8, 12, 13, 15, and 21 are obvious over
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`Lytle in view of Adachi and should be cancelled.
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`VII. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THALMANN
`IN VIEW OF WILLIAMS UNDER 35 U.S.C. § 103(A)
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`PO relies on its ill-fated construction of “means for supplying” one last time
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`(Resp. at 50-52), but the result should be the same – the Board should apply
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`Petitioner’s construction of the structure required for this limitation, which is clearly
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`found in Williams. Pet. at 56, 38-40.
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`PO also argues that Thalmann only teaches audio input of speech and not
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`music signals and that Williams does not teach a virtual environment. Resp. at 53.
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`However, this argument ignores (1) that Thalmann is relied upon to teach a virtual
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`environment – a fact that PO does not contest – and (2) that Williams is relied upon
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`to teach processing music signals. Pet. at 52-53; see also Inst. Dec. at 23. Thus, contrary
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`to PO’s assertion, the proposed combination of Thalmann and Williams teaches both
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`a virtual environment and processing music signals.
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`PO further contends that Williams “associates actions with the time positions
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`or locations, rather than based on the content of the sound recording itself.” Resp. at
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`54; Inst. Dec. at 19-20. As indicated in the Petition, “actions and sounds can be
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`synchronized for display on the visual display of a computer system.” Ex. 1005,
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`Williams at 5:29-31. Additionally “different sound features or combinations of
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`13
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`features, such as intensity, frequency, percussive of fricative sounds, can signal which
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`actions should be associated with which time positions.” Id. at 4:43-46. As such,
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`Williams discloses that actions are associated with time positions according to sound
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`features.
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`PO also mistakenly contends that “Petitioner failed to identify in either
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`Thalmann or Williams any characteristic of any virtual object that changes in response
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`to a music signal.” Resp. at 54. Williams specifically discloses that movements of a
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`character’s mouth, face and body are synchronized with music and when combined
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`with Thalmann fully satisfy this limitation from claim 3. Pet. at 53-54. A person of
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`ordinary skill in the art would have been motivated to combine Thalmann with the
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`processing of Williams. Pet. at 51; see also Pope Decl. at ¶35. As such the challenged
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`claims are obvious over Thalmann in view of Williams and should be cancelled.
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`In one last attempt to poke a hole in the combination of Thalmann and
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`Williams, PO contends that there would not have been a motivation to combine the
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`two references. PO Resp. at 57-60. Putting aside the fact that an express motivation
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`to combine is not necessary to prove obviousness, PO completely misconstrues the
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`proposed combination. For example, PO contends that Thalmann does not describe
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`generating a control track and Williams does not make mention of a virtual
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`environment. See PO Resp. at 57. However, the Petition is clear that Thalmann
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`describes a virtual environment that uses audio input for facial animation. Pet. at 50,
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`U.S. Patent No. 5,513,129
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`52-53. And Williams more specifically describes how to process audio signals to
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`operate a computer, such as by general facial animations in response to the audio
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`signal. Pet. at 53-54. In other words, Petitioner proposes the exact opposite
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`combination of these references teachings and, as such, PO’s arguments are irrelevant.
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`As set forth in the petition, one of skill in the art would have recognized that
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`modifying the virtual environment of Thalmann to use the audio signal processing set
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`forth in Williams “would be desirable to carry out Thalmann’s stated goal of using
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`audio input to drive animation in a virtual world.” Ex. 1007, Pope Decl. at ¶ 33; see id.
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`at 26-32, 34-36. Therefore, Thalmann in view of Williams render claims 1–4, 12, 13,
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`15, and 21 obvious.
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`VIII. CONCLUSION
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`Based on the foregoing, the Board should invalidate claims 1-13, 15-18, and 21-
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`23 of the ‘129 Patent.
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`Date: April 10, 2015
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY: /Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
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`IPR2014-00635
`IPR2014—OO635
`U.S. Patent No. 5,513,129
`US. Patent No. 5,513,129
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`ATTORNEYS FOR PETITIONER
`ATTORNEYS FOR PETTHONER
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`IPR2014-00635
`U.S. Patent No. 5,513,129
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(a)
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), the undersigned certifies that on
`April 10, 2015, a complete and entire copy of Petitioner’s Reply was sent via Federal
`Express to the Patent Owner by serving the correspondence address of record for the
`‘129 Patent and Patent Owner’s litigation counsel:
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`Dr. Gregory Gonsalves (Lead Counsel)
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia
`22043 (571) 419-7252
`gonsalves@gonsalveslawfirm.com
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`
`Robert R. Axenfeld (Back-up Counsel)
`O’Kelly Ernst & Bielli, LLC
`901 Market Street, Suite 1000
`Wilmington, DE 19801
`raxenfeld@oeblegal.com
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY:
` /Eric A. Buresh/
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`ATTORNEYS FOR PETITIONER
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