EXHIBIT 2009
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`EXHIBIT 2009
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` Paper 33
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` Entered: November 21, 2013
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SONY CORPORATION
`Petitioner
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`v.
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`YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW
`UNIVERSITY OF JERUSALEM
`Patent Owner
`_______________
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`Case IPR2013-002191
`Patent 7,477,284 B2
`_______________
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JAMES B. ARPIN, Administrative Patent Judges.
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`ARPIN, Administrative Patent Judge.
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`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`1 The IPR2013-00327 proceeding has been joined with this proceeding.
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 1
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`

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`Case IPR2013-00219
`Patent 7,477,284 B2
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`I. INTRODUCTION
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`Petitioner, Sony Corporation, filed a request for rehearing (Paper 22; “Req.”)
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`of the Board’s September 23, 2013, decision (Paper 16; “Dec.”), which instituted
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`inter partes review of claims 1-3, 10, 20, 27-29, 36, and 37 of Patent No.
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`US 7,477,284 B2 (Ex. 1001; “the ’284 Patent”). Petitioner argues that (1) the
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`grounds based on Ishiguro (Ex. 1005) for challenging the patentability of claims 1-
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`4, 7, 10, 27-29, 36, and 382 are not redundant; (2) the Board should institute inter
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`partes review of challenged claims 20 and 37 based on Kawakita (Ex. 1004);
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`(3) the Board should institute inter partes review of challenged claims 20 and 37
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`based on Ishiguro; and (4) the Board should institute inter partes review of
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`challenged claim 38 based on Asahi. Req. 2-3; see Dec. 8 (listing full citations to
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`the references).
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`On October 16, 2013, Patent Owner filed a response (Paper 23) opposing
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`Petitioner’s request for rehearing; and, on October 18, 2013, Petitioner filed a reply
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`(Paper 24) responding to Patent Owner’s opposition to the request for rehearing.
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`Rule 42.71(d), however, does not provide for a party to file an opposition to a
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`request for rehearing without first obtaining authorization from the Board. See
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`SAP America, Inc. v. Versata Software, Inc., CBM2012-00001, Paper 73 (PTAB
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`July 15, 2013) (Order Authorizing Additional Briefing). Patent Owner did not
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`seek the Board’s authorization to file its response, and, therefore, Patent Owner’s
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`response has not been considered. Moreover, because we have not considered
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`Patent Owner’s unauthorized response to Petitioner’s request for rehearing, we also
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`have not considered Petitioner’s reply to the unauthorized response.
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`2 In its decision in IPR2013-00327, Paper 14, dated September 24, 2013, the Board
`instituted inter partes review of claims 4, 7, and 38 of the ’284 Patent. In view of
`the contemporaneous decision joining IPR2013-00327 with IPR2013-00219,
`Petitioner refers to the claims identified in each petition in its request for rehearing.
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`2
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 2
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`For the reasons set forth below, Petitioner’s request is denied.
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`II. STANDARD OF REVIEW
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`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
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`panel will review the decision for an abuse of discretion.” An abuse of discretion
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`occurs when a “decision was based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
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`(citations omitted). The request must identify, with specificity, all matters that the
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`moving party believes the Board misapprehended or overlooked. 37 C.F.R.
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`§ 42.71(d).
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`III. DISCUSSION
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`Petitioner argues that the grounds for challenging claims 1-4, 7, 10, 27-29,
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`36, and 38 of the ’284 Patent based on Ishiguro are not redundant in view of the
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`institution of inter partes review with respect to those claims based on Kawakita
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`because Ishiguro is “better in some respect” than Kawakita. Req. 4-5 (quoting
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003,
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`Paper 7, at 3 (PTAB Oct. 25, 2012)). In particular, Petitioner argues that, unlike
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`Kawakita, Patent Owner does not challenge Ishiguro’s status as a printed
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`publication. Id. at 4.
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`The Board is charged with securing the just, speedy, and inexpensive
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`resolution of every proceeding and has the discretion to deny some grounds to
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`ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.108(b). In our decisions in
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`the now-joined proceedings, we instituted inter partes review based on grounds
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`covering all of the challenged claims, going forward on the grounds that the Board
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`determined to be the most sufficient substantively. In that regard, the Board
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`determined that, based on the record evidence, Kawakita is a publicly accessible
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`3
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 3
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`reference. Pet. 52-55 (citing, e.g., Ex. 1015, Ex. 1024, and Ex. 1031). For
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`purposes of the decision to institute, Petitioner established that Kawakita was
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`publicly accessible, and the Board was not persuaded by Patent Owner’s
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`arguments to the contrary. Dec. 19-20; see Prelim. Resp. 18-19.
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`Therefore, as indicated, the issue of the public accessibility of Kawakita was
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`not raised for the first time in Patent Owner’s preliminary response. Rather,
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`Petitioner addressed the issue directly and persuasively in its petition. Pet. 52-55.
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`Petitioner directed the Board to evidence, including three separate and consistent
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`declarations (see Ex. 1015, Ex. 1024, and Ex. 1031), to establish facts sufficient to
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`show that Kawakita is available as a reference at this point in the proceeding, and
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`Patent Owner failed to persuade us otherwise. Based on the Board’s determination
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`that Kawakita was a publicly accessible reference as of the putative, priority date
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`of the ’284 Patent, the Board determined to institute review on grounds of
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`unpatentability with respect to challenged claims 1-3, 10, 20, 27-29, 36, and 37,
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`based on Kawakita and to deny institution on grounds of unpatentability based on
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`Ishiguro. Dec. 35.
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`Lastly, for purposes of our decision, the Board was not persuaded that
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`Ishiguro necessarily describes “a display that receives a plurality of the mosaics
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`and displays them so as to provide a sense of depth of the scene,” as recited in
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`independent claims 1 and 27. Dec. 16-17 ( construing a “display”); see also
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`Prelim. Resp. 20-21. Consequently, Petitioner does not argue in its petition, and
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`we do not determine from Petitioner’s petition and Patent Owner’s preliminary
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`response, that Ishiguro is “better in some respect” than Kawakita, as Petitioner
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`asserts (see Req. 3-4); and we, therefore, decline to modify the decision to institute.
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`For these reasons, we are not persuaded that the Board abused its discretion in not
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`instituting inter partes review on grounds based on Ishiguro.
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`4
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 4
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`Petitioner argues that the Board should institute inter partes review of
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`claims 1-4, 7, 10, 27-29, 36, and 38 on grounds based on Ishiguro because the
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`Board instituted inter partes review on grounds based on Ishiguro in related
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`IPR 2013-00218, involving Patent No. US 6,665,003 B1 (“the ’003 Patent”).
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`Req. 5-6. Further, Petitioner argues that the Board should institute inter partes
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`review of claims 20 and 37 on grounds based on Kawakita alone or Kawakita and
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`Chen (Ex. 1008; see Dec. 9) because the Board instituted inter partes review of
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`allegedly, “substantively similar” claim 22 of the ’003 Patent on those grounds.
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`Req. 7-9. Petitioner argues that, because these claims are “substantively similar,”
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`“the Board invites contradictory outcomes” by failing to institute on the same
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`grounds in each inter partes review. Id. at 6 (emphasis added); see also Req. 8.
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`Initially, we note that the challenged claims of the ’003 Patent differ from
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`the challenged claims of the ’284 Patent. Significantly, challenged apparatus
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`claim 1 of the ’284 Patent recites that the imaging apparatus comprises “a display
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`that receives a plurality of the mosaics and displays them so as to provide a sense
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`of depth of the scene.” See Ex. 1001, Claim 1; see also Ex. 1001, Claim 38
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`(reciting a “displaying” step). No such limitation appears in independent claim 1
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`or 343 of the ’003 Patent.
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`Petitioner also argues that claims 20 and 37 of the ’284 Patent are
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`“substantively similar” to claim 22 of the ’003 Patent. Req. 7-8. Petitioner argues
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`that, “[f]or the sake of consistency and to avoid conflicting rulings,” the Board also
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`should institute inter partes review of claims 20 and 37 on grounds based on
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`Kawakita, or Kawakita and Chen. Id. at 8-9. Nevertheless, claims 20 and 37 of
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`the ’284 Patent and claim 22 of the ’003 Patent are dependent claims; and, for the
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`3 Petitioner challenged independent claim 34 in IPR2013-00326 that is joined with
`IPR2013-00218.
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`5
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 5
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`reasons noted above regarding their respective base claims, we determine that
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`challenged claims 20 and 37 of the ’284 Patent differ from challenged claim 22 of
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`the ’003 Patent.
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`Petitioner notes that the Scheduling Orders for IPR2013-00218 and
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`IPR2013-00219 contain identical Due Dates. Req. 7. Petitioner argues that,
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`because these cases may be argued together, the Board already will hear the
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`parties’ arguments regarding (1) Ishiguro with respect to claims 1 and 34 of the
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`’003 Patent and (2) Kawakita, and Kawakita and Chen, with respect to claim 22 of
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`the ’003 Patent. Id. at 7-8. Consequently, Petitioner argues that the Board should
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`institute on the allegedly similar claims of the ’284 Patent on the same grounds.
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`Id.
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`The Board has coordinated the Scheduling Orders for IPR2013-00218 and
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`IPR2013-00219, so that the Due Dates in each proceeding fall on the same dates
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`and, in particular, so that any oral hearings in these proceedings occur on the same
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`date, but these proceedings are not joined. The Board coordinated the Due Dates
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`of these separate, inter partes reviews for the convenience of the parties, their
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`counsel, and the Board, and in view of the concern expressed by Patent Owner in
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`its opposition (IPR2013-00327, Paper 11; “Opp.”) to the Petitioner’s motion for
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`joinder over possible delay in the resolution of these proceedings. Opp. 9-10.
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`In addition, Petitioner argues that the Board should institute inter partes
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`review of challenged claims 20 and 37 of the ’284 Patent as unpatentable over
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`Ishiguro and over Ishiguro and Chen (1) because the Board instituted inter partes
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`review of allegedly, substantively similar claim 22 of the ’003 Patent over Ishiguro
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`and over Ishiguro and Chen and (2) because Patent Owner is challenging whether
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`Kawakita is a printed publication. Req. 9. For the reasons discussed above, we
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`determine that Petitioner fails to demonstrate that the Board abused its discretion in
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`6
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 6
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`not instituting inter partes review of claims 20 and 37 as unpatentable over
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`Ishiguro or over Ishiguro and Chen, or both.
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`As noted above, Petitioner argues in its request for rehearing that the Board
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`should institute inter partes review on the same grounds in IPR2013-00218 and
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`IPR2013-00219 to ensure consistency in their outcomes. Req. 6, 8. Because the
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`challenged claims of the ’284 and ’003 Patents differ, we discern no present danger
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`of inconsistency. For these reasons, Petitioner fails to demonstrate that the Board
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`abused its discretion in not instituting inter partes review on the same grounds for
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`distinct claims in IPR2013-00218 and IPR2013-00219.
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`Petitioner argues that the Board should institute inter partes review of
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`challenged, independent claim 38 of the ’284 Patent as anticipated by Asahi
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`because the Board instituted inter partes review of allegedly, substantively similar,
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`independent claims 1 and 27 of the ’284 Patent as anticipated by Asahi. Req. 10.
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`In particular, Petitioner argues that, although claim 38 is a method claim, claim 38
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`“recites essentially the same claim limitations for purposes of patentability as
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`claims 1 and 27.” Id.
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`Petitioner has not shown, however, that the Board’s decision not to institute
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`inter partes review of claim 38 based on Asahi was an abuse of discretion.
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`37 C.F.R. § 42.71(c). In the request for rehearing, Petitioner argues that, “[f]or the
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`sake of consistency, in order to avoid conflicting rulings among similar claims, and
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`because the additional burden of considering anticipation of claim 38 by Asahi will
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`be minimal if not nonexistent, the Board should institute review of claim 38 as
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`anticipated by Asahi.” Req. 10. We are not persuaded that the Board’s decision to
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`institute review of method claim 38 on grounds based on Kawakita, rather than on
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`both Kawakita and Asahi, creates the danger of inconsistencies or conflicting
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`rulings. Further, even if the added burden imposed on the Board in considering an
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`7
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 7
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`Case IPR2013-00219
`Patent 7,477,284 B2
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`additional ground as to the same claim were minimal, Petitioner fails to
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`demonstrate that the total burden added to the proceeding and to the parties is not.
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`37 C.F.R. § 42.1(b) (The Board is tasked with securing “the just, speedy, and
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`inexpensive resolution” of this proceeding.) For the reasons discussed above, we
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`determine that Petitioner fails to demonstrate that the Board abused its discretion in
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`not instituting inter partes review of claim 38 as anticipated by Asahi.
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`IV. ORDER
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`Accordingly, it is hereby:
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`ORDERED that Petitioner’s request for rehearing is denied.
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`FOR PETITIONER:
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`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`whanley@kenyon.com
`mccarniaux@kenyon.com
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`FOR PATENT OWNER:
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`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
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`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
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`8
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`Patent Owner Exhibit 2009
`Petition for IPR Review of Patent No. 8,519,973
`Page 8