IPR2015-00806
`U.S. 7,765,482
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case: IPR2015-00806
`Patent 7,765,482
`
`CORRECTED PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`U.S. 7,765,482
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GOOGLE INC.,
`Petitioner
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner
`
`
`
`
`Case: IPR2015-00806
`Patent 7,765,482
`
`CORRECTED PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00806
`U.S. 7,765,482
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`THE COMBINATION OF CREAMER AND AIHARA
`RENDERS THE CHALLENGED CLAIMS OBVIOUS ............................... 2
`
`
`
`I.
`
`II.
`
`III. THE COMBINATION OF MAYLE AND NARAYEN ALSO
`RENDERS THE CHALLENGED CLAIMS OBVIOUS ............................... 5
`
`IV. PATENT OWNER’S ATTEMPT TO REBUT THE
`MOTIVATION TO COMBINE THE PRIOR ART FAILS ........................... 7
`
`A.
`
`B.
`
`V.
`
`A.
`
`B.
`
`Patent Owner Failed to Rebut the Motivation to Combine
`Creamer and Aihara. ........................................................................................ 7
`
`Patent Owner Failed to Rebut the Motivation to Combine
`Mayle and Narayen. ......................................................................................... 9
`
`PATENT OWNER HAS NOT PRESENTED OBJECTIVE
`EVIDENCE OF NONOBVIOUSNESS ........................................................ 12
`
`Patent Owner Has Not Demonstrated a Nexus. ............................................. 13
`
`Patent Owner’s Alleged Evidence of Long-Felt Need,
`Commercial Success, Licensing, or Industry Praise is
`Insufficient. .................................................................................................... 15
`
`C.
`
`Any Commercial Success Resulted from Other Factors. .............................. 20
`
`VI. THE TESTIMONY OF PATENT OWNER’S WITNESSES
`SHOULD BE GIVEN LITTLE WEIGHT .................................................... 22
`
`A.
`
`B.
`
`Sarah Pate & Scott Lewis .............................................................................. 22
`
`Dr. Kaliski Should be Given Little Weight ................................................... 23
`
`VII. CONCLUSION .............................................................................................. 25
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`IPR2015-00806
`U.S. 7,765,482
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`LIST OF EXHIBITS
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`Exhibit 1001
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`U.S. 7,765,482 (“the ’482 patent”)
`
`Exhibit 1002
`
`Exhibit 1003
`
`Complaint in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-
`00014-O (N.D. Tex. Feb. 18, 2014) (ECF No. 1), served on
`Real Parties in Interest on February 25 & 26, 2014.
`Declaration of Dr. Paul Clark
`
`Exhibit 1004
`
`U.S. 6,930,709 to Creamer et al. (“Creamer”)
`
`Exhibit 1005
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`U.S. 6,223,190 to Aihara et al. (“Aihara”)
`
`Exhibit 1006
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`U.S. 6,018,774 to Mayle et al. (“Mayle”)
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`Exhibit 1007
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`U.S. 6,035,323 to Narayen et al. (“Narayen”)
`
`Exhibit 1008
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`Exhibit 1009
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`Exhibit 1010
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`Exhibit 1011
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`Exhibit 1012
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`Exhibit 1013
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`Exhibit 1014
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`Exhibit 1015
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`Provisional Application No. 60/085,585, filed on May 15, 1998
`(“Creamer ’98”)
`Provisional Application No. 60/067,310, filed Dec. 4, 1997
`(“Creamer ’97”)
`Ex-parte Re-Examination No. 90/012,987, Applicant
`Arguments & Remarks Made in an Amendment, March 31,
`2014
`Plaintiff’s Opening Claim Construction Brief in Summit 6 LLC
`v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18,
`2014) (ECF No. 217)
`Civil Summons and Proof of Service for Real Parties in Interest
`in Summit 6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O
`(N.D. Tex. Feb. 18, 2014) (ECF Nos. 11, 13, 14)
`Joint Claim Construction and Prehearing Statement in Summit
`6 LLC v. HTC Corp., et al., No. 7:14-cv-00014-O (N.D. Tex.
`Feb. 18, 2014) (ECF No. 149)
`Joint Notice of Settlement in Summit 6 LLC v. HTC Corp., et
`al., No. 7:14-cv-00014-O (N.D. Tex. Feb. 18, 2014) (ECF No.
`238)
`Settlement Agreement Between HTC Entities and Summit 6
`LLC
`
`ii
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`IPR2015-00806
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`Exhibit 1016
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`Transcript of February 19, 2016 deposition of Scott Lewis
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`Exhibit 1017
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`Exhibit 1018
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`Transcript of February 26, 2016 deposition of Dr. Martin
`Kaliski
`Declaration of Dr. Gary Frazier
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`Exhibit 1019
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`Transcript of February 18, 2016 deposition of Sarah Pate
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`iii
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`
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`Petitioner Google Inc. (“Petitioner”) submits this Reply to Patent Owner’s
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`IPR2015-00806
`U.S. 7,765,482
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`
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`Response in Opposition to the Petition for Inter Partes Review (the “Response”
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`Paper 28) of U.S. Patent No. 7,765,482 (“the ’482 Patent”).
`
`I.
`
`INTRODUCTION
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`The challenged claims are unpatentable.
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`
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`
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` However, despite longstanding precedent to
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`the contrary, Patent Owner argues that making known steps less “cumbersome”
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`renders the claims non-obvious. This argument fails. Indeed, that a known process
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`was cumbersome suggests that a person of ordinary skill in the art would be
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`motivated to combine known technologies to improve the process. As
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`demonstrated by the Petition, a person of skill in the art would be motivated to
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`combine the cited prior art. In view of those combinations, every challenged claim
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`is obvious.
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`Patent Owner’s attempt to overcome the strong obviousness showing by
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`proffering evidence of alleged secondary considerations also fails. Patent Owner’s
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`evidence is not credible.
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`
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`. And its technical expert
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`admitted he had no independent opinion regarding commercial success, but rather
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`that he “was told that that was the case by the attorneys that [he is] working with.”
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`Ex. 1017 at 81:4-5. Further, as shown in detail in the declaration of Dr. Frazier,
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`IPR2015-00806
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`even if Patent Owner presented credible testimony, the secondary considerations
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`argument still fails. Patent Owner fails to establish a nexus between any secondary
`
`considerations and the claims or provide sufficient evidence that commercial
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`success even existed. Further, even if Patent Owner supported its secondary
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`considerations argument, the proffered secondary considerations are insufficient to
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`overcome the strong showing of obviousness here.
`
`II. THE COMBINATION OF CREAMER AND AIHARA RENDERS
`THE CHALLENGED CLAIMS OBVIOUS
`
`Contrary to Patent Owner’s assertion, Creamer and Aihara both disclose
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`“receiving an identification of a group of one or more media objects for
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`transmission.” Patent Owner argues that in Creamer “no digital image files [sic]
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`exists until after the image pickup unit captures light photons and the raw data is
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`processed and stored as an image file in S38.” Response at 28. But Creamer plainly
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`discloses storing a digital image in image memory. Ex. 1004 at 18:53-56 (“the A/D
`
`converter 246 converts the YCrCb signal to a digital image signal, which is passed
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`by the compression engine 224 and memory controller 226 to the image memory
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`(at this point, without compression).”). Patent Owner fails to provide any argument
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`why an uncompressed digital image stored in image memory is not a media object,
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`nor does it explain why media objects are limited to only image files. Cf. Ex. 2057
`
`
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`2
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`
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`at 58:15-25 (“Q. And an encoded image file does not exist in image memory, does
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`IPR2015-00806
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`it? A. I mean, for some definition of encoding, there's a representation of the image
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`that is in image memory. So there is an encoding actually. Q Is an image stored in
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`image memory addressable? A. Yes.”) And Patent Owner’s own expert agrees that
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`the digital data stored in image memory is an image. Ex. 1017 at 16:9-11 (“Q. And
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`is that captured image in image memory – that’s a digital captured image? A.
`
`Yes.”)).
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`Aihara also discloses “receiving an identification of a group of one or more
`
`media objects for transmission.” Aihara states, “a script can be created that
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`sequentially directs the user to select from a set of previously captured images
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`stored within camera 110.” Ex. 1005 at 7:39-41 (emphasis added). Aihara also
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`states, “the user could be prompted to select pictures from a set stored in the
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`memory of the camera, stored on removable media, or stored elsewhere.” Ex. 1005
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`at 8:26-29 (emphasis added). Even Patent Owner’s expert agrees that Aihara
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`“discloses selecting a picture.” Ex. 1017 at 34:20-25. Patent Owner’s unsupported
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`arguments on this point do not overcome the clear disclosure of Aihara.
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`Patent Owner next argues that Creamer’s disclosure of varying the level of
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`JPEG compression does not disclose “a specification of an amount of digital data,”
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`rather, these change an amount of data. This argument is also incorrect. Creamer
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`discloses setting a compression level and compressing an image to meet a certain
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`3
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`compression standard, which alters the amount of stored data. Ex. 1003 at ¶ 38.
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`Further, Creamer discloses changing the size of an image via cropping. Ex. 1004 at
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`8:43-48 (“a scaling module for interpolating or resampling the stored image to
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`increase or decrease the size of the stored image, including adjustment of an aspect
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`ratio of the image and cropping of any portion of the image.”). In fact, Patent
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`Owner’s own expert admits that such an operation would meet this limitation. See
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`Ex. 1017 at 100:3-7 (“Q. And specifying the size of the image is an example of
`
`specifying the amount of data in that image? A. … Yes. It certainly can be related
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`to the amount of data that's in the image.”)
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`Patent Owner next argues that Creamer does not disclose placing “said
`
`digital content into a specified form in preparation for publication,” as is recited in
`
`claim 13. However, Patent Owner’s expert states that publishing should be
`
`interpreted to mean “making publicly available.” Ex. 2058 at ¶ 315. And Patent
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`Owner agrees that Creamer discloses “upload[ing] each captured image to a
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`website.” Response at 10. Patent Owner has not articulated any reason why
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`preparing images to be posted on a website is not preparing those images to be
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`made publicly available. Patent Owner simply cannot do so – Creamer discloses
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`“image files referenced by, or linked to, [a] Web page and viewable by any remote
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`user using an accessing device, e.g., a personal computer 310 ….” Ex. 1004 at
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`12:5-8. Thus, Creamer discloses preparing the digital image for publication.
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`4
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`For each of the foregoing reasons Patent Owner’s arguments fail. The
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`challenged claims are obvious in light of Creamer in combination with Aihara.
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`III. THE COMBINATION OF MAYLE AND NARAYEN ALSO
`RENDERS THE CHALLENGED CLAIMS OBVIOUS
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`All of Patent Owner’s arguments regarding Mayle and Narayen are premised
`
`on Patent Owner’s incorrect assertion that Mayle only discloses server-side image
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`processing. See, e.g., Response at 37-44. This assertion, however, is directly
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`contradicted by the express disclosure of Mayle and the testimony of Patent
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`Owner’s own expert, Dr. Kaliski.
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`According to Mayle, “embodiments can further be adapted to provide
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`additional processing by the client computer of the electronic image data.” Ex.
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`1006 at 13:52-54 (emphasis added). When questioned about this disclosure in
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`Mayle, Patent Owner’s expert Dr. Kaliski admitted: “Q: So this section of Mayle
`
`discusses the client computer processing image data? A: Electronic image data,
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`yes.” Ex. 1017 at 40:5-8 (objection omitted).
`
`Patent Owner attempts to sidestep Mayle’s express disclosure by
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`characterizing any processing done by Mayle’s client device as a mere “‘preview’
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`of the image as it will appear after processing by the server.” Response at 38. But
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`the disclosure and teaching of Mayle is broader than Patent Owner admits. Mayle
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`states that the “client may be augmented to perform a portion of the processing
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`5
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`during interactions with the server.” Ex. 1006 at 3:2-4. And Mayle identifies, as
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`one of several examples, software running on the client computer that can preview
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`the result of image data processing that occurs on the client. Ex. 1006 at 13:60 –
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`14:1.
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`Mayle explains that “the result produced as [sic] result of this processing on
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`the client computer could be at the same resolution as created by the server
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`computer or it could be a lower quality so as to minimize processing time for the
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`preview, thus allowing the server to actually produce the final processed
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`information.” Ex. 1006 at 14:2-7 (emphasis added). Mayle contemplates at least
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`two possibilities: client-side processing at the same quality as what could be done
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`at the server, or lower quality client-side processing for purposes of generating a
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`preview while allowing the server to actually perform final image processing. Id.
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`Neither Patent Owner nor Dr. Kaliski provide any explanation as to why either of
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`these possibilities does not constitute pre-processing the image at the client device
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`as recited in the challenged claims.
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`Patent Owner’s refusal to acknowledge the express disclosure in Mayle
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`exposes the circular logic of Patent Owner’s arguments. As Dr. Clark opined, it
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`would be obvious to a person of ordinary skill to send processing parameters from
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`the server hosting the website to a client device executing a browser-based system
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`to perform image processing locally. Ex. 1003 at ¶ 55. And it would also be
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`6
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`obvious, once client-side processing was completed, to transmit the processed
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`image from the client to the server as Mayle teaches. Ex. 1003 at ¶ 59. Rather than
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`rebut these points, Patent Owner simply reiterates its incorrect argument on client-
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`side processing. Response at 37-41. The fundamental premise upon which Patent
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`Owner bases its rebuttal argument is simply wrong—Mayle discloses “additional
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`processing by the client computer of the electronic image data.” Ex. 1006 at
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`13:52-54 (emphasis added). Patent Owner’s arguments ignore this express
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`disclosure and should be rejected.
`
`IV. PATENT OWNER’S ATTEMPT TO REBUT THE MOTIVATION TO
`COMBINE THE PRIOR ART FAILS
`A.
`
`Patent Owner Failed to Rebut the Motivation to Combine
`Creamer and Aihara.
`
`Patent Owner’s argument that a Person of Ordinary Skill would not be
`
`motivated to combine Creamer and Aihara ignores that both these references
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`disclose digital cameras configured to format images so they can be made available
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`via the Internet. See, e.g., Ex. 1004 at Abstract (“An integrated Internet camera
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`includes, as embedded components contained within the camera body and
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`controlled by a microcontroller, at least a network interface device for connecting
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`to the Internet….”); cf. Ex. 1005 at Abstract (“The digital camera then generates an
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`HTML file including the resulting images, wherein the HTML file is formatted in
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`accordance with the predefined model.”)
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`7
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`Patent Owner argues that one would not be motivated to combine these
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`IPR2015-00806
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`
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`cameras because Creamer allegedly does not disclose a “review mode” that enables
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`a user to review captured images, a feature that Patent Owner admits is disclosed
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`by Aihara’s “play mode.” Response at 12. But one of skill in the art would be
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`motivated to apply this feature from Aihara to Creamer. Ex. 1003 at ¶ 31
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`(“Combining the technique of displaying preview images, as disclosed by Aihara,
`
`on a camera display of limited size, as disclosed by Creamer, would improve the
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`ability of the screen to display multiple images.”). Further, Creamer suggests such
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`a modification because Creamer discloses an architecture where the LCD 218 is
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`connected to GP DRAM 228 via Integrated Microcontroller 200. See Ex. 1004 at
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`Fig. 17; Ex. 2057 at 30:17-31:2 (“Q. Is it your testimony that because there is a
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`connection from image memory to the LCD screen or LCD display on Figures 3,
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`that the LCD display will display anything that's stored in image memory? A. It
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`certainly has the capability to do so. And the disclosure does not rule it out.
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`Furthermore, there is disclosure about the color adjust and other adjustments that
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`would require the display of the image, and there is a 214 button switch input that
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`shows that the user has the ability to perform such input.”).
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`Patent Owner also argues that one would not combine Creamer and Aihara
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`because reviewing captured images on a small display would be slower. This
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`argument is also without merit. Even Patent Owner’s own expert agrees that
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`8
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`thumbnails – which are disclosed by both Creamer (Ex. 1004 at 13:21-24) and
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`Aihara (Ex. 1005 at 1:33-36) – allow for more efficient browsing of lower
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`resolution images. Ex. 1017 at 13:6-19 (“Q: …your understanding of a thumbnail,
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`then, is a lower-resolution image that you can use to browse through a set of -- or
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`more efficiently browse through sets of images? THE WITNESS:· Yeah … my
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`daughter has an Android phone, a Samsung Edge, Galaxy Edge, and she was
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`showing it off to me the other day, and I was looking through it. I was browsing it,
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`looking at all the thumbnails on it to see what kind of apps she had. So that’s the
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`sense in which I think ‘browsing’ is used, and that's the way I use the term
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`‘thumbnail’ in general.” (objection omitted)).
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`B.
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`Patent Owner Failed to Rebut the Motivation to Combine Mayle
`and Narayen.
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`Mayle teaches creating an “album” of electronic images that may have a
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`“fixed structure (i.e. a specific frame and format for the page holding the image) or
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`allow a variety of structures for the user to select from.” Ex. 1006 at 13:29-33.
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`Narayen teaches a system for creating “a picture album or another type of media
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`container using a media authoring program … the picture album has multiple
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`pages with multiple pictures in the album.” Ex. 1007 at 7:1-4. Dr. Clark testified
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`that it would have been obvious to a person of ordinary skill in the art to combine
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`Mayle and Narayen in view of this similar disclosure. Ex. 1003 at ¶¶ 51-52. The
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`9
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`combination would have provided Narayen’s image processing tools in the base
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`system described by Mayle. Id.
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`Patent Owner suggests that “Mayle and Narayen are directed toward
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`different types of albums that solve different problems.” Response at 22. But
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`neither Patent Owner nor its expert provides any specific rationale as to why these
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`differences would dissuade a person of ordinary skill from combining the
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`references. Ex. 2058 at ¶ 78. In his declaration, Dr. Kaliski contends “that Narayen
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`and Mayle are based on fundamentally different architectures, namely, a server-
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`based system of Mayle and the client-based system of Narayen, counsels against
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`combining these references.” Ex. 2058 at ¶ 79. However, during his deposition Dr.
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`Kaliski admitted that a person designing a system would consider whether to
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`implement processing on the client or the server as a design choice. Ex. 1017 at
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`72:24-73:2 (“That somebody designing such a system, if they wanted to be
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`thorough, could ask the question of whether they would do it on a client or do it on
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`a server.”). Use of one solution that solves no stated or unique problem in lieu of
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`other solutions would be an obvious matter of design choice within the skill of the
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`art. See In re Kuhle, 526 F.2d 553, 555 (C.C.P.A. 1975). Further, as described in
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`detail above in Section III, even Dr. Kaliski admits that Mayle does, in fact,
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`disclose client-side image processing. Thus, Patent Owner’s assertions are
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`undermined by its own expert’s opinions and should be rejected.
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`10
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`The petition and Dr. Clark identify specific improvements disclosed in
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`Narayen to be combined with Mayle. As Dr. Clark explains, Narayen is “a system
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`for creating and uploading albums of digital images via the Internet.” Ex. 1003 at ¶
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`51. And the petition notes that Narayen “allows the user to build a digital photo
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`album and subsequently publish the album to the Internet.” Paper 1 at 15. Mayle
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`teaches a photo album as an embodiment, and Narayen discloses the tools to create
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`and publish a digital photo album to the Internet. Neither Patent Owner’s
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`suggestion that these features disclosed in Narayen are somehow “unknown” nor
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`Patent Owner’s attempt to test Dr. Clark’s memory during deposition rebut the
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`express motivation to combine Mayle and Narayen. See Response at 24-25.
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`Patent Owner’s final contention that a Java-enabled web browser could not
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`perform image processing is simply wrong. Dr. Kaliski agrees: “Q: So a person
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`could consider whether processing would be done on the server or on the client
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`with such a Java application? A: Sure.” Ex. 1017 at 73:5-8. This contention
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`directly contradicts Patent Owner’s position that its own “Rimfire” service,
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`accessed with a Java-enabled web browser, performed image processing. Ex. 2058
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`at ¶ 190. According to Dr. Kaliski, “Rimfire, including the Prepare & Post™
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`Tools, is at least ‘reasonably commensurate with the scope’ of the challenged
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`claims.” Ex. 2058 at ¶ 187. And according to Dr. Kaliski, “client-side processing is
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`implemented by downloading either an ActiveX control or a Java applet.” Ex.
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`11
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`2058 at ¶ 190 (citing Ex. 2014 at 11). Patent Owners arguments that a Java-enabled
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`web browser cannot process images should be rejected in view of its position
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`regarding Rimfire’s alleged implementation in a Java-enabled web browser.
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`Thus, Patent Owner fails to demonstrate any credible reason why a person of
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`ordinary skill would not combine the prior art cited in the Petition. Those
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`combinations render obvious and therefore invalidate the challenged claims.
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`V.
` PATENT OWNER HAS NOT PRESENTED OBJECTIVE
`EVIDENCE OF NONOBVIOUSNESS
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`Evidence of “secondary considerations,” or objective indicia, of
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`nonobviousness is a factor underlying the legal conclusion of obviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). To be relevant, evidence of
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`secondary considerations “must be reasonably commensurate with the scope of the
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`claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Such evidence is
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`significant only if there is a nexus between the claimed invention and the evidence.
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`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006).
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`Further, secondary considerations have been found insufficient to overcome a
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`strong case of obviousness. See, e.g., Apple Inc. v. Samsung Elecs. Co., Ltd., 2016
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`WL 761884 at *11 (Fed. Cir. Feb. 26, 2016).
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`A nexus is required in order to establish that the evidence relied upon traces
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`its basis to a novel element in the claim, not to something in the prior art. Institut
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`12
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`Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347
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`(Fed. Cir. 2013). When objective evidence results from something that is not “both
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`claimed and novel in the claim, there is no nexus to the merits of the claimed
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`invention.” In re Kao, 639 F.3d at 1068 (emphasis in original). All types of
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`objective evidence of non-obviousness must be shown to have such a nexus.
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`Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper No. 43 at 27 (P.T.A.B. Feb. 8,
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`2016) (citations omitted).
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`A.
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`Patent Owner Has Not Demonstrated a Nexus.
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`14
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`>—a -B
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`B.
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`Patent Owner’s Alleged Evidence of Long-Felt Need, Commercial
`Success, Licensing, or Industry Praise is Insufficient.
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`IPR2015-00806
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`IPR2015-00806
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`16
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`>—a O\
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`IPR2015-00806
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`IPR2015-00806
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`17
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`IPR2015-00806
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`IPR2015-00806
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`18
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`>—a O0
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`IPR2015-00806
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`IPR2015-00806
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`19
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`>—a ©
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`IPR2015-00806
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`C. Any Commercial Success Resulted from Other Factors.
`C.
`Any Commercial Success Resulted from Other Factors.
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`l\.) C
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`VI. THE TESTIMONY OF PATENT OWNER’S WITNESSES SHOULD
`BE GIVEN LITTLE WEIGHT
`A.
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`Sarah Pate & Scott Lewis
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`B. Dr. Kaliski Should be Given Little Weight
`The Board should give the testimony of Dr. Martin Kaliski (Exhibit 2058)
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`little or no weight for many reasons.
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`First, Dr. Kaliski provided opinions on issues about which he admits he had
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`no knowledge, and even admits that one of his “opinions” was given to him by the
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`23
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`attorneys that retained him. Ex. 1017 at 80:25-81:21 (“Okay. The next sentence
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`IPR2015-00806
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`you say ‘Summit 6 achieved significant commercial success.’ A. Yes. Q. How do
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`you know that? A. I was told that that was the case by the attorneys that I'm
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`working with…. I'm not really in a position to judge what is commercial
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`success.” (emphasis added)) The Board should afford this testimony regarding
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`commercial success no weight because the expert made clear that it is not his
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`opinion, but rather that of Summit 6’s attorneys. See, e.g., Numatics, Inc. v. Balluff,
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`Inc., 66 F. Supp. 3d 934, 943 (E.D. Mich. 2014) (“Where an expert merely offers
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`his client’s opinion as his own, that opinion may be excluded.”) (citations omitted).
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`Second, Dr. Kaliski provided opinions about the operation of Rimfire, but
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`admitted that he had very little knowledge of Rimfire. As explained in Section V.A
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`above, Dr. Kaliski formed his opinion based on an incomplete document and
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`admitted that he had no idea what version of Rimfire the documents he reviewed
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`describe. The Board should therefore give little or no weight to Dr. Kaliski’s
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`testimony on Rimfire.
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`Third, during cross examination Dr. Kaliski routinely contradicted his direct
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`testimony. See, e.g., Ex. 2058 at ¶ 69 (“Creamer discloses a text-based user
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`interface, rather than a graphical user interface.”) cf. Ex. 1017 at 22:24-23:1 (“Q.
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`But there are embodiments in Creamer that suggest a graphical user interface? A.
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`For the menu structure, yes.”); Ex. 2058 ¶ 116 (“The parameters identified by
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`24
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`Petitioner in Creamer (See Pet., pp. 26– 27) do not control processing of image
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`IPR2015-00806
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`files prior to transmission, as required by the claim language.”) cf. Ex. 1017 at
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`76:1-3 (“Q. So that means Creamer teaches compression is performed prior to
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`transfer? A. Yes.”); Ex. 2058 ¶ 70 (“Clark in ¶ 45 states ‘the combination of
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`Creamer and Aihara discloses or renders obvious displaying a preview image or
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`thumbnail image of digital content having a reduced size relative to said content.’ I
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`disagree.”) cf. Ex. 1017 at 12:4-7 (“THE WITNESS: I think that Creamer here
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`talks about thumbnail images and is -- is effectively defining what he means by
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`that as a smaller image used for browsing images.”). Each of these clear
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`contradictions indicates that Dr. Kaliski’s direct testimony is unreliable and should
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`be given little or no weight.
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`VII. CONCLUSION
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`For the reasons articulated above and in the Petition, Petitioner respectfully
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`requests the Board issue a Final Written Decision cancelling claims 12, 13, 16, 18,
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`19, 21, 22, 23, 24, 25, 35, 36, 37, 38, 40, 41, 42, 44, 45, 46, and 49 for invalidity
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`under 35 U.S.C. § 103.
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`Respectfully submitted,
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`By:
`John Alemanni (Registration No. 47,384)
`Lead Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of this CORRECTED
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE, together with
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`all new Exhibits has been served Via email upon the following:
`
`Peter J. Ayers
`peter@1eehayes.com
`John Shumaker
`
`jshumaker@leehayes.com
`Brian Mangum
`brianm@leehayes.com
`
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`
`Dated: March 10, 2016
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`
`
`By:
`John Alemanni
`
`Registration No. 47,384
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`Lead Counsel
`
`Back-Us Counsel
`
`John Alemanni
`
`Michael Morlock
`
`Registration No. 47,384
`JAlemanni@kilpatricktownsend.com
`
`Registration No. 62,245
`MMorlock@kilpatricktownsend.com
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`Fax: 336 607-7500
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`Postal and Hand-Deliveg; Address:
`Postal and Hand-Deliveg; Address:
`Kilpatrick Townsend & Stockton LLP Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`1001 West Fourth Street
`
`Winston-Salem, NC 27101-2400
`
`Winston-Salem, NC 27101-2400
`
`Telephone: (336) 607-7311
`Fax: 336 607-7500
`
`Telephone: (336) 607-7391
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