IPR2015-00806
`U.S. 7,765,482
`
`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
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`IPR2015-00806
`U.S. 7,765,482
`
`LIST OF EXHIBITS
`
`Exhibit 1001
`
`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
`
`U.S. 6,223,190 to Aihara et al. (“Aihara”)
`
`Exhibit 1006
`
`U.S. 6,018,774 to Mayle et al. (“Mayle”)
`
`Exhibit 1007
`
`U.S. 6,035,323 to Narayen et al. (“Narayen”)
`
`Exhibit 1008
`
`Exhibit 1009
`
`Exhibit 1010
`
`Exhibit 1011
`
`Exhibit 1012
`
`Exhibit 1013
`
`Exhibit 1014
`
`Exhibit 1015
`
`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
`
`
`
`
`
`
`
`IPR2015-00806
`U.S. 7,765,482
`
`Exhibit 1016
`
`Transcript of February 19, 2016 deposition of Scott Lewis
`
`Exhibit 1017
`
`Exhibit 1018
`
`Transcript of February 26, 2016 deposition of Dr. Martin
`Kaliski
`Declaration of Dr. Gary Frazier
`
`Exhibit 1019
`
`Transcript of February 18, 2016 deposition of Sarah Pate
`
`iii
`
`
`
`
`
`
`
`Petitioner Google Inc. (“Petitioner”) submits this Reply to Patent Owner’s
`
`IPR2015-00806
`U.S. 7,765,482
`
`
`
`Response in Opposition to the Petition for Inter Partes Review (the “Response”
`
`Paper 28) of U.S. Patent No. 7,765,482 (“the ’482 Patent”).
`
`I.
`
`INTRODUCTION
`
`The challenged claims are unpatentable. Patent Owner and its witnesses
`
`admit that each step of the challenged claims was known in the art. Response at 3;
`
`Exs. 2058 at ¶ 17; 1016 at 48:1 – 49:1. However, despite longstanding precedent to
`
`the contrary, Patent Owner argues that making known steps less “cumbersome”
`
`renders the claims non-obvious. This argument fails. Indeed, that a known process
`
`was cumbersome suggests that a person of ordinary skill in the art would be
`
`motivated to combine known technologies to improve the process. As
`
`demonstrated by the Petition, a person of skill in the art would be motivated to
`
`combine the cited prior art. In view of those combinations, every challenged claim
`
`is obvious.
`
`Patent Owner’s attempt to overcome the strong obviousness showing by
`
`proffering evidence of alleged secondary considerations also fails. Patent Owner’s
`
`evidence is not credible. Patent Owner’s fact witnesses’ sole income is derived
`
`from licensing of the patent-at-issue and related patents. And its technical expert
`
`admitted he had no independent opinion regarding commercial success, but rather
`
`that he “was told that that was the case by the attorneys that [he is] working with.”
`
`
`
`
`
`
`Ex. 1017 at 81:4-5. Further, as shown in detail in the declaration of Dr. Frazier,
`
`IPR2015-00806
`U.S. 7,765,482
`
`even if Patent Owner presented credible testimony, the secondary considerations
`
`argument still fails. Patent Owner fails to establish a nexus between any secondary
`
`considerations and the claims or provide sufficient evidence that commercial
`
`success even existed. Further, even if Patent Owner supported its secondary
`
`considerations argument, the proffered secondary considerations are insufficient to
`
`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
`
`“receiving an identification of a group of one or more media objects for
`
`transmission.” Patent Owner argues that in Creamer “no digital image files [sic]
`
`exists until after the image pickup unit captures light photons and the raw data is
`
`processed and stored as an image file in S38.” Response at 28. But Creamer plainly
`
`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
`
`by the compression engine 224 and memory controller 226 to the image memory
`
`(at this point, without compression).”). Patent Owner fails to provide any argument
`
`why an uncompressed digital image stored in image memory is not a media object,
`
`nor does it explain why media objects are limited to only image files. Cf. Ex. 2057
`
`
`
`2
`
`
`
`
`at 58:15-25 (“Q. And an encoded image file does not exist in image memory, does
`
`IPR2015-00806
`U.S. 7,765,482
`
`it? A. I mean, for some definition of encoding, there's a representation of the image
`
`that is in image memory. So there is an encoding actually. Q Is an image stored in
`
`image memory addressable? A. Yes.”) And Patent Owner’s own expert agrees that
`
`the digital data stored in image memory is an image. Ex. 1017 at 16:9-11 (“Q. And
`
`is that captured image in image memory – that’s a digital captured image? A.
`
`Yes.”)).
`
`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
`
`sequentially directs the user to select from a set of previously captured images
`
`stored within camera 110.” Ex. 1005 at 7:39-41 (emphasis added). Aihara also
`
`states, “the user could be prompted to select pictures from a set stored in the
`
`memory of the camera, stored on removable media, or stored elsewhere.” Ex. 1005
`
`at 8:26-29 (emphasis added). Even Patent Owner’s expert agrees that Aihara
`
`“discloses selecting a picture.” Ex. 1017 at 34:20-25. Patent Owner’s unsupported
`
`arguments on this point do not overcome the clear disclosure of Aihara.
`
`Patent Owner next argues that Creamer’s disclosure of varying the level of
`
`JPEG compression does not disclose “a specification of an amount of digital data,”
`
`rather, these change an amount of data. This argument is also incorrect. Creamer
`
`discloses setting a compression level and compressing an image to meet a certain
`
`
`
`3
`
`
`
`
`compression standard, which alters the amount of stored data. Ex. 1003 at ¶ 38.
`
`IPR2015-00806
`U.S. 7,765,482
`
`Further, Creamer discloses changing the size of an image via cropping. Ex. 1004 at
`
`8:43-48 (“a scaling module for interpolating or resampling the stored image to
`
`increase or decrease the size of the stored image, including adjustment of an aspect
`
`ratio of the image and cropping of any portion of the image.”). In fact, Patent
`
`Owner’s own expert admits that such an operation would meet this limitation. See
`
`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
`
`to the amount of data that's in the image.”)
`
`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
`
`Owner agrees that Creamer discloses “upload[ing] each captured image to a
`
`website.” Response at 10. Patent Owner has not articulated any reason why
`
`preparing images to be posted on a website is not preparing those images to be
`
`made publicly available. Patent Owner simply cannot do so – Creamer discloses
`
`“image files referenced by, or linked to, [a] Web page and viewable by any remote
`
`user using an accessing device, e.g., a personal computer 310 ….” Ex. 1004 at
`
`12:5-8. Thus, Creamer discloses preparing the digital image for publication.
`
`
`
`4
`
`
`
`For each of the foregoing reasons Patent Owner’s arguments fail. The
`
`IPR2015-00806
`U.S. 7,765,482
`
`
`
`challenged claims are obvious in light of Creamer in combination with Aihara.
`
`III. THE COMBINATION OF MAYLE AND NARAYEN ALSO
`RENDERS THE CHALLENGED CLAIMS OBVIOUS
`
`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
`
`processing. See, e.g., Response at 37-44. This assertion, however, is directly
`
`contradicted by the express disclosure of Mayle and the testimony of Patent
`
`Owner’s own expert, Dr. Kaliski.
`
`According to Mayle, “embodiments can further be adapted to provide
`
`additional processing by the client computer of the electronic image data.” Ex.
`
`1006 at 13:52-54 (emphasis added). When questioned about this disclosure in
`
`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,
`
`yes.” Ex. 1017 at 40:5-8 (objection omitted).
`
`Patent Owner attempts to sidestep Mayle’s express disclosure by
`
`characterizing any processing done by Mayle’s client device as a mere “‘preview’
`
`of the image as it will appear after processing by the server.” Response at 38. But
`
`the disclosure and teaching of Mayle is broader than Patent Owner admits. Mayle
`
`states that the “client may be augmented to perform a portion of the processing
`
`
`
`5
`
`
`
`
`during interactions with the server.” Ex. 1006 at 3:2-4. And Mayle identifies, as
`
`IPR2015-00806
`U.S. 7,765,482
`
`one of several examples, software running on the client computer that can preview
`
`the result of image data processing that occurs on the client. Ex. 1006 at 13:60 –
`
`14:1.
`
`Mayle explains that “the result produced as [sic] result of this processing on
`
`the client computer could be at the same resolution as created by the server
`
`computer or it could be a lower quality so as to minimize processing time for the
`
`preview, thus allowing the server to actually produce the final processed
`
`information.” Ex. 1006 at 14:2-7 (emphasis added). Mayle contemplates at least
`
`two possibilities: client-side processing at the same quality as what could be done
`
`at the server, or lower quality client-side processing for purposes of generating a
`
`preview while allowing the server to actually perform final image processing. Id.
`
`Neither Patent Owner nor Dr. Kaliski provide any explanation as to why either of
`
`these possibilities does not constitute pre-processing the image at the client device
`
`as recited in the challenged claims.
`
`Patent Owner’s refusal to acknowledge the express disclosure in Mayle
`
`exposes the circular logic of Patent Owner’s arguments. As Dr. Clark opined, it
`
`would be obvious to a person of ordinary skill to send processing parameters from
`
`the server hosting the website to a client device executing a browser-based system
`
`to perform image processing locally. Ex. 1003 at ¶ 55. And it would also be
`
`
`
`6
`
`
`
`
`obvious, once client-side processing was completed, to transmit the processed
`
`IPR2015-00806
`U.S. 7,765,482
`
`image from the client to the server as Mayle teaches. Ex. 1003 at ¶ 59. Rather than
`
`rebut these points, Patent Owner simply reiterates its incorrect argument on client-
`
`side processing. Response at 37-41. The fundamental premise upon which Patent
`
`Owner bases its rebuttal argument is simply wrong—Mayle discloses “additional
`
`processing by the client computer of the electronic image data.” Ex. 1006 at
`
`13:52-54 (emphasis added). Patent Owner’s arguments ignore this express
`
`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
`
`disclose digital cameras configured to format images so they can be made available
`
`via the Internet. See, e.g., Ex. 1004 at Abstract (“An integrated Internet camera
`
`includes, as embedded components contained within the camera body and
`
`controlled by a microcontroller, at least a network interface device for connecting
`
`to the Internet….”); cf. Ex. 1005 at Abstract (“The digital camera then generates an
`
`HTML file including the resulting images, wherein the HTML file is formatted in
`
`accordance with the predefined model.”)
`
`
`
`7
`
`
`
`Patent Owner argues that one would not be motivated to combine these
`
`IPR2015-00806
`U.S. 7,765,482
`
`
`
`cameras because Creamer allegedly does not disclose a “review mode” that enables
`
`a user to review captured images, a feature that Patent Owner admits is disclosed
`
`by Aihara’s “play mode.” Response at 12. But one of skill in the art would be
`
`motivated to apply this feature from Aihara to Creamer. Ex. 1003 at ¶ 31
`
`(“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
`
`ability of the screen to display multiple images.”). Further, Creamer suggests such
`
`a modification because Creamer discloses an architecture where the LCD 218 is
`
`connected to GP DRAM 228 via Integrated Microcontroller 200. See Ex. 1004 at
`
`Fig. 17; Ex. 2057 at 30:17-31:2 (“Q. Is it your testimony that because there is a
`
`connection from image memory to the LCD screen or LCD display on Figures 3,
`
`that the LCD display will display anything that's stored in image memory? A. It
`
`certainly has the capability to do so. And the disclosure does not rule it out.
`
`Furthermore, there is disclosure about the color adjust and other adjustments that
`
`would require the display of the image, and there is a 214 button switch input that
`
`shows that the user has the ability to perform such input.”).
`
`Patent Owner also argues that one would not combine Creamer and Aihara
`
`because reviewing captured images on a small display would be slower. This
`
`argument is also without merit. Even Patent Owner’s own expert agrees that
`
`
`
`8
`
`
`
`
`thumbnails – which are disclosed by both Creamer (Ex. 1004 at 13:21-24) and
`
`IPR2015-00806
`U.S. 7,765,482
`
`Aihara (Ex. 1005 at 1:33-36) – allow for more efficient browsing of lower
`
`resolution images. Ex. 1017 at 13:6-19 (“Q: …your understanding of a thumbnail,
`
`then, is a lower-resolution image that you can use to browse through a set of -- or
`
`more efficiently browse through sets of images? THE WITNESS:· Yeah … my
`
`daughter has an Android phone, a Samsung Edge, Galaxy Edge, and she was
`
`showing it off to me the other day, and I was looking through it. I was browsing it,
`
`looking at all the thumbnails on it to see what kind of apps she had. So that’s the
`
`sense in which I think ‘browsing’ is used, and that's the way I use the term
`
`‘thumbnail’ in general.” (objection omitted)).
`
`B.
`
`Patent Owner Failed to Rebut the Motivation to Combine Mayle
`and Narayen.
`
`Mayle teaches creating an “album” of electronic images that may have a
`
`“fixed structure (i.e. a specific frame and format for the page holding the image) or
`
`allow a variety of structures for the user to select from.” Ex. 1006 at 13:29-33.
`
`Narayen teaches a system for creating “a picture album or another type of media
`
`container using a media authoring program … the picture album has multiple
`
`pages with multiple pictures in the album.” Ex. 1007 at 7:1-4. Dr. Clark testified
`
`that it would have been obvious to a person of ordinary skill in the art to combine
`
`Mayle and Narayen in view of this similar disclosure. Ex. 1003 at ¶¶ 51-52. The
`
`
`
`9
`
`
`
`
`combination would have provided Narayen’s image processing tools in the base
`
`IPR2015-00806
`U.S. 7,765,482
`
`system described by Mayle. Id.
`
`Patent Owner suggests that “Mayle and Narayen are directed toward
`
`different types of albums that solve different problems.” Response at 22. But
`
`neither Patent Owner nor its expert provides any specific rationale as to why these
`
`differences would dissuade a person of ordinary skill from combining the
`
`references. Ex. 2058 at ¶ 78. In his declaration, Dr. Kaliski contends “that Narayen
`
`and Mayle are based on fundamentally different architectures, namely, a server-
`
`based system of Mayle and the client-based system of Narayen, counsels against
`
`combining these references.” Ex. 2058 at ¶ 79. However, during his deposition Dr.
`
`Kaliski admitted that a person designing a system would consider whether to
`
`implement processing on the client or the server as a design choice. Ex. 1017 at
`
`72:24-73:2 (“That somebody designing such a system, if they wanted to be
`
`thorough, could ask the question of whether they would do it on a client or do it on
`
`a server.”). Use of one solution that solves no stated or unique problem in lieu of
`
`other solutions would be an obvious matter of design choice within the skill of the
`
`art. See In re Kuhle, 526 F.2d 553, 555 (C.C.P.A. 1975). Further, as described in
`
`detail above in Section III, even Dr. Kaliski admits that Mayle does, in fact,
`
`disclose client-side image processing. Thus, Patent Owner’s assertions are
`
`undermined by its own expert’s opinions and should be rejected.
`
`
`
`10
`
`
`
`The petition and Dr. Clark identify specific improvements disclosed in
`
`IPR2015-00806
`U.S. 7,765,482
`
`
`
`Narayen to be combined with Mayle. As Dr. Clark explains, Narayen is “a system
`
`for creating and uploading albums of digital images via the Internet.” Ex. 1003 at ¶
`
`51. And the petition notes that Narayen “allows the user to build a digital photo
`
`album and subsequently publish the album to the Internet.” Paper 1 at 15. Mayle
`
`teaches a photo album as an embodiment, and Narayen discloses the tools to create
`
`and publish a digital photo album to the Internet. Neither Patent Owner’s
`
`suggestion that these features disclosed in Narayen are somehow “unknown” nor
`
`Patent Owner’s attempt to test Dr. Clark’s memory during deposition rebut the
`
`express motivation to combine Mayle and Narayen. See Response at 24-25.
`
`Patent Owner’s final contention that a Java-enabled web browser could not
`
`perform image processing is simply wrong. Dr. Kaliski agrees: “Q: So a person
`
`could consider whether processing would be done on the server or on the client
`
`with such a Java application? A: Sure.” Ex. 1017 at 73:5-8. This contention
`
`directly contradicts Patent Owner’s position that its own “Rimfire” service,
`
`accessed with a Java-enabled web browser, performed image processing. Ex. 2058
`
`at ¶ 190. According to Dr. Kaliski, “Rimfire, including the Prepare & Post™
`
`Tools, is at least ‘reasonably commensurate with the scope’ of the challenged
`
`claims.” Ex. 2058 at ¶ 187. And according to Dr. Kaliski, “client-side processing is
`
`implemented by downloading either an ActiveX control or a Java applet.” Ex.
`
`
`
`11
`
`
`
`
`2058 at ¶ 190 (citing Ex. 2014 at 11). Patent Owners arguments that a Java-enabled
`
`IPR2015-00806
`U.S. 7,765,482
`
`web browser cannot process images should be rejected in view of its position
`
`regarding Rimfire’s alleged implementation in a Java-enabled web browser.
`
`Thus, Patent Owner fails to demonstrate any credible reason why a person of
`
`ordinary skill would not combine the prior art cited in the Petition. Those
`
`combinations render obvious and therefore invalidate the challenged claims.
`
`V.
` PATENT OWNER HAS NOT PRESENTED OBJECTIVE
`EVIDENCE OF NONOBVIOUSNESS
`
`Evidence of “secondary considerations,” or objective indicia, of
`
`nonobviousness is a factor underlying the legal conclusion of obviousness.
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). To be relevant, evidence of
`
`secondary considerations “must be reasonably commensurate with the scope of the
`
`claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Such evidence is
`
`significant only if there is a nexus between the claimed invention and the evidence.
`
`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006).
`
`Further, secondary considerations have been found insufficient to overcome a
`
`strong case of obviousness. See, e.g., Apple Inc. v. Samsung Elecs. Co., Ltd., 2016
`
`WL 761884 at *11 (Fed. Cir. Feb. 26, 2016).
`
`A nexus is required in order to establish that the evidence relied upon traces
`
`its basis to a novel element in the claim, not to something in the prior art. Institut
`
`
`
`12
`
`
`
`
`Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347
`
`IPR2015-00806
`U.S. 7,765,482
`
`(Fed. Cir. 2013). When objective evidence results from something that is not “both
`
`claimed and novel in the claim, there is no nexus to the merits of the claimed
`
`invention.” In re Kao, 639 F.3d at 1068 (emphasis in original). All types of
`
`objective evidence of non-obviousness must be shown to have such a nexus.
`
`Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper No. 43 at 27 (P.T.A.B. Feb. 8,
`
`2016) (citations omitted).
`
`A.
`Patent Owner Has Not Demonstrated a Nexus.
`No nexus exists between the Rimfire service and any novel element of any
`
`of the challenged claims. Patent Owner has failed to specifically identify any single
`
`element in any challenged claim that was not already known in the prior art. As
`
`Petitioner has shown, each element of the challenged claims is disclosed in the
`
`cited combinations of prior art.
`
`Patent Owner identifies several elements that were purportedly present in the
`
`Rimfire service, but none of these elements are novel. See Response at 45. Pre-
`
`processing images such as sizing, cropping, rotating, and reformatting was known
`
`in the art. See, e.g., Ex. 1004 at 8:20-51; Ex. 1005 at 1:13-27; Ex. 1006 at 13:47 –
`
`14:9; Ex. 1007 at 9:45-57. Uploading image files to servers for distribution was
`
`known in the art. See, e.g., Ex. 1004 at 12:10-32; Ex. 1005 at 14:64-66; Ex. 1006 at
`
`12:37-60; Ex. 1007 at 2:38-40. And the preparation of thumbnail images was also
`
`
`
`13
`
`
`
`
`known in the art. See, e.g., Ex. 1004 at 13:18-28; Ex. 1005 at 1:28-38; Ex. 1007 at
`
`IPR2015-00806
`U.S. 7,765,482
`
`6:56-59. Patent Owner’s witness Scott Lewis admits that a realtor with sufficient
`
`skill could already perform all the claimed elements. Ex. 1016 at 48:1-49:1. This
`
`by itself indicates that the invention was obvious. See In re Petersen, 223 F.2d 508,
`
`511-12 (C.C.P.A. 1955) (a combination of old steps yielding an expected result,
`
`which may realize improvement over the existing art, does not itself operate to
`
`sustain a claim of patentability).
`
`Furthermore, Patent Owner has failed to put forth sufficient credible
`
`evidence to prove that the Rimfire service was reasonably commensurate with the
`
`scope of the challenged claims. Patent Owner relies only on the opinion testimony
`
`of Dr. Kaliski to support this argument. Dr. Kaliski, in turn, relied on only three
`
`exhibits to form his opinions regarding Rimfire: Exhibits 2010, 2014, and 2030.
`
`Ex. 2058 at ¶ 14. Dr. Kaliski never reviewed the source code for Rimfire, and he
`
`does not even know what language the Prepare & Post Tools were coded in. Ex.
`
`1017 at 44:22-24; 90:4-7. Further, during deposition Dr. Kaliski admitted that he
`
`has no idea: (1) what version of Rimfire the exhibits he reviewed describe, (2) how
`
`many versions of Rimfire were ultimately released, (3) what versions of Rimfire
`
`were physically implemented for any particular customers, (4) how the Prepare &
`
`Post Tools were integrated into Rimfire, or (5) what algorithms were built into
`
`those tools. Ex. 1017 at 81:4 – 88:9. Because Dr. Kaliski has almost no
`
`
`
`14
`
`
`
`
`understanding of the Rimfire service apart from a review of high-level design
`
`IPR2015-00806
`U.S. 7,765,482
`
`documentation, his opinions are insufficient evidence of a nexus.
`
`The three exhibits themselves are also insufficient evidence to establish a
`
`nexus between the Rimfire service and Patent Owner’s proffered objective indicia
`
`of non-obviousness. Patent Owner and Dr. Kaliski primarily rely on Exhibit 2010,
`
`which purports to be the “Rimfire Functional Specification, Version 1.0 Core
`
`Feature Set.” However, Patent Owner’s declarant Sarah Pate admitted that the
`
`exhibit was incomplete and riddled with placeholders for content yet to be added.
`
`Ex. 1019 at 73:7 – 77:9. And there is absolutely no evidence that the specific
`
`version of Rimfire described in Exhibit 2010 (Version 1.0, Revision 4) was ever
`
`actually implemented. Patent Owner has provided no evidence to establish that the
`
`version of Rimfire described in Exhibit 2010 is linked to the other evidence relied
`
`upon by Patent Owner as objective indicia of non-obviousness. Similarly, Exhibit
`
`2014 lacks any indication as to the version of Rimfire it describes and there is no
`
`evidence provided by Patent Owner to link this specific document to the other
`
`evidence of secondary considerations of non-obviousness.
`
`B.
`
`Patent Owner’s Alleged Evidence of Long-Felt Need, Commercial
`Success, Licensing, or Industry Praise is Insufficient.
`
`Even if a nexus were found between the challenged claims and the purported
`
`objective indicia relied upon by Patent Owner, its proffered evidence is insufficient
`
`
`
`15
`
`
`
`
`to prove the existence of any actual objective indicia of non-obviousness.
`
`IPR2015-00806
`U.S. 7,765,482
`
`To establish evidence of a long-felt but unresolved need, a patent owner
`
`must show that there was a persistent problem that was recognized by those of
`
`ordinary skill in the art. Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527,
`
`Paper 48 at 47 (P.T.A.B. Feb. 12, 2015). Patent Owner has failed to do so here.
`
`First, there is simply no evidence on the record that a persistent problem was
`
`recognized by a person of ordinary skill in the art. Neither of Patent Owner’s
`
`declarants, Scott Lewis and Sarah Pate, purport to be of ordinary skill in the art or
`
`experts in either technology or marketing. And as Mr. Lewis explained, the target
`
`customers for the Rimfire service were realtors, who “did not have the time or
`
`patience to go through this process, and many simply did not have the skills to do
`
`so.” Ex. 2050 at ¶ 12. Realtors who lacked the technical knowledge to upload a
`
`photo to the Internet were not persons of ordinary skill. And yet even so, Mr.
`
`Lewis admitted that some Realtors could format and upload photos without the
`
`Rimfire service. Ex. 1016 at 47:15-25.
`
`Long-felt need is analyzed as of the date of an articulated identified problem
`
`and evidence of efforts to solve that problem. Tex. Instruments Inc. v. U.S. Int’l
`
`Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Patent Owner has failed to
`
`identify any of this information. Indeed, Patent Owner fails to provide sufficient
`
`evidence to show that any need, assuming one existed, was actually “long-felt,”
`
`
`
`16
`
`
`
`
`since Mr. Lewis’ testimony only refers back to 1997 and fails to explain when any
`
`IPR2015-00806
`U.S. 7,765,482
`
`actual need arose. Ex. 1018 at ¶ 23. Patent Owner has also failed to provide
`
`sufficient credible evidence to show the extent that any such need was felt in any
`
`relevant market or industry. Ex. 1018 at ¶¶ 20-22.
`
`
`
`As Dr. Frazier explained, the evidence of commercial success presented by
`
`Patent Owner is equally insufficient and, in fact, suggests that Patent Owner’s
`
`Rimfire service was commercially unsuccessful. Ex. 1018 at ¶ 30. Most important,
`
`Patent Owner has failed to provide any evidence to establish the relevant market
`
`size(s) and Patent Owner’s market share thereof. Ex. 1018 at ¶ 26. Evidence
`
`related solely to quantity provides a very weak showing of commercial success, if
`
`any, absent an indication of whether the data represents a substantial quantity in
`
`the market. See In re Huang, 100 F.3d. 135, 140 (Fed. Cir. 1996). Patent Owner’s
`
`unsupported claim that the eBay contract generated revenue of more than $44
`
`million in three years lacks any indication as to whether $44 million is a substantial
`
`share of any market and fails to prove any commercial success on its own. Ex.
`
`1018 at ¶ 28.
`
`While Patent Owner claims to have “achieved a dominant position in the
`
`online newspaper classified market by 2004,” the data in Exhibit 2020 reveals that
`
`Patent Owner had a market share of 0.136% in that market in 2004. Ex. 1018 at ¶
`
`30. Other data presented by Patent Owner is equally underwhelming. Ex. 1018 at ¶
`
`
`
`17
`
`
`
`
`31. According to Mr. Lewis, the “chief asset” driving a $175 million acquisition of
`
`IPR2015-00806
`U.S. 7,765,482
`
`Patent Owner’s predecessor entity in 2000 was the Rimfire technology service. Ex.
`
`2050 at ¶ 41. However, just four years later, the Rimfire technology was acquired
`
`in a management buyout for $1.035 million. Ex. 2020 at 5 (showing AdMission
`
`assets including patents and pending applications were acquired in exchange for
`
`1.035 million shares of stock valued at $1.00 per share); see also Ex. 1019 at
`
`135:3-19. Thus, in four years, the “chief asset” relied upon by Patent Owner as
`
`evidence of commercial success depreciated in value by 99.4%.
`
`As with commercial success, evidence of industry praise is only relevant
`
`when it is directed to the merits of the invention claimed. Chums, IPR2014-01240,
`
`Paper 43 at 32. Here there is no credible evidence of industry praise. Ex. 1018 at ¶
`
`32. Patent Owner points to several “articles” touting its Rimfire service, but these
`
`documents are actually press releases authored by Patent Owner and its employees,
`
`and several “releases” do not appear to have actually been published. See Exs.
`
`2007, 2011, 2013, 2026; see, e.g., Ex. 1019 at 63:10-18. Other documents relied
`
`upon by Patent Owner lack any indication as to the credentials of their authors and
`
`the relation between the authors and any relevant “industry” such that the
`
`documents could even be considered industry praise. See Exs. 2015, 2026, 2046,
`
`2052, 2053. The only two exhibits that could be interpreted as praise fail to provide
`
`any evidence regarding the criteria used in recognizing the Rimfire service or what
`
`
`
`18
`
`
`
`
`merits of the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
