UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner
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`v.
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`BRADIUM TECHNOLOGIES LLC
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 7,139,794 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`TABLE OF CONTENTS
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`V.
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`Page
`EXHIBIT LIST ........................................................................................................ ii
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. GROUND FOR STANDING ............................................................... 3
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 3
`IV. OVERVIEW OF THE 794 PATENT ............................................................. 5
`A.
`PRIORITY DATE OF THE 794 PATENT ......................................... 5
`B.
`SUMMARY OF THE 794 PATENT ................................................... 6
`C.
`SUMMARY OF PROSECUTION FILE HISTORY......................... 10
`D.
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 11
`E.
`PROPOSED CLAIM CONSTRUCTION .......................................... 12
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 794 PATENT IS UNPATENTABLE .................... 13
`A.
`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 13
`B.
`SUMMARY OF INVALIDITY POSITIONS ................................... 14
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1 AND 2 OF THE 794
`PATENT ....................................................................................................... 15
`A. GROUND 1: CLAIMS 1 AND 2 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103(a) AS BEING OBVIOUS OVER
`POTMESIL, HORNBACKER, AND LINDSTROM ........................ 15
`B. GROUND 2: CLAIM 1 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER RUTLEDGE IN
`VIEW OF LIGTENBERG AND COOPER ....................................... 41
`C. GROUND 3: CLAIM 2 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER RUTLEDGE IN
`VIEW OF LIGTENBERG, COOPER AND MIGDAL..................... 53
`VII. CONCLUSION ............................................................................................. 60
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`Petition for Inter Partes Review of U.S. Patent 7,139,794 B2
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 7,139,794 B2 to Levanon et al. (“the 794 Patent”)
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`Ex. 1002 Declaration of Judea d’Arnaud, attaching the article Maps Alive:
`Viewing Geospatial Information on the WWW, Michael Potmesil,
`Computer Networks and ISDN Systems Vol. 29, issues 8-13, pp.
`1327-1342 (“Potmesil”) as Exhibit A.
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`Ex. 1003
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`PCT Publication No. WO 1999/041675 by Cecil V. Hornbacker, III
`(“Hornbacker”)
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`Ex. 1004 U.S. Pat. No. 5,682,441 to Adrianus Ligtenberg et al. (“Ligtenberg”)
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`Ex. 1005 U.S. Pat. No. 6,650,998 to Charles Wayne Rutledge et al. (“Rutledge”)
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`Ex. 1006 U.S. Pat. No. 6,118,456 to David G. Cooper (“Cooper”)
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`Ex. 1007 U.S. Pat. No. 5,760,783 to Migdal et al. (“Migdal”)
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`Ex. 1008 Declaration of Prof. William R. Michalson
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Six Provisional Applications from which the 794 Patent claims
`priorities.
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`EP1070290 to Cecil V. Hornbacker, III from a European national
`application based on PCT Publication No. WO 1999/041675 (Ex.
`1003)
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`An Integrated Global GIS and Visual Simulation System by P.
`Lindstrom et al., Tech. Rep. GIT-GVU-97-07, March 1997
`(“Lindstrom”)
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`Ex. 1012 Declaration of Dr. Peter Lindstrom (including Exhibits A, B and C)
`regarding the publication of the 1997 article entitled “An Integrated
`Global GIS and Visual Simulation System” which is Ex. 1011
`(“Lindstrom”)
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`Petition for Inter Partes Review of U.S. Patent 7,139,794 B2
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`Ex. 1013 Declaration of Mr. Charles Randall Carpenter (including Exhibits A,
`B, C and D) regarding the publication of 1997 article entitled “An
`Integrated Global GIS and Visual Simulation System” which is Ex.
`1011 (“Lindstrom”)
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Microsoft Corporation
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`(“Microsoft” or “Petitioner”) petitions for inter partes review (“IPR”) of claims 1
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`and 2 of U.S. Pat. No. 7,139,794 B2 (“the 794 Patent,” Ex. 1001), currently owned
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`by Bradium Technologies LLC (“Bradium” or “Patent Owner”). This Petition is a
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`remedial measure for correcting the issuance of invalid claims in the original
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`examination and is necessitated by Patent Owner’s improper enforcement of the
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`invalid claims.
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`Specifically, this Petition shows there is a reasonable likelihood that
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`Petitioner will prevail with respect to at least one of the claims 1 and 2 challenged
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`under 35 U.S.C. § 314(a). As demonstrated by a preponderance of the evidence in
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`this Petition in compliance with 35 U.S.C. § 316(e), claims 1 and 2 are
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`unpatentable under pre-AIA 35 U.S.C. §103 based on specific grounds listed
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`below.
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`Grounds
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`References
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`Challenged Claims
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`Pre-AIA
`35 U.S.C. §103(a)
`Pre-AIA
`35 U.S.C. §103(a)
`Pre-AIA
`35 U.S.C. §103(a)
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`Potmesil, Lindstrom, and Hornbacker Claims 1 and 2
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`Rutledge, Ligtenberg and Cooper
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`Rutledge, Ligtenberg, Cooper and
`Migdal
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`Claim 1
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`Claim 2
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`Petitioner Microsoft respectfully requests the Office to institute a trial for
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`IPR and to cancel claims 1 and 2.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
`REAL PARTY IN INTEREST: Pursuant to 35 U.S.C. §312(a)(2) and 37
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`C.F.R. §42.8(b)(1), Petitioner Microsoft constitutes all real parties in interest for
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`this IPR proceeding.
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`RELATED MATTERS: Patent Owner Bradium is asserting the 794 Patent
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`and two other related patents, U.S. Patent Nos. 7,908,343 and 8,924,506, against
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`Petitioner in an on-going patent infringement lawsuit in Bradium Techs. LLC v.
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`Microsoft Corp., 1:15-cv-00031-RGA, filed in the U.S. District Court for the
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`District of Delaware on Jan. 9, 2015. In addition, Petitioner is pursuing IPR
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`petitions on 343 and 506 Patents asserted in the above litigation.
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`NOTICE OF COUNSEL AND SERVICE INFORMATION: Pursuant to 37
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`C.F.R. §§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Petitioner appoints Bing Ai (Reg.
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`No. 43,312) as lead counsel, Matthew Bernstein (pro hac vice), Vinay Sathe
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`(Reg. No. 55,595) and Patrick McKeever (Reg. No. 66,019) as back-up counsel.
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`Petitioner also requests authorization to file a motion for Mr. Bernstein to
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`appear pro hac vice, as Mr. Bernstein is an experienced patent litigation attorney, is
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`lead counsel for Petitioner in the district court litigation, and has an established
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`familiarity with the subject matter at issue in this proceeding. Petitioner intends to
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`file such a motion once authorization is granted. The above attorneys are all at the
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`mailing address of Perkins Coie LLP, 11988 El Camino Real, Suite 350, San
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`Diego, CA 92130, contact numbers of 858-720-5700 (phone) and 858-720-5799
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`(fax), and the following email for service and all communications:
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`PerkinsServiceBradiumIPR@perkinscoie.com.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by Microsoft for
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`appointing the above designated counsel is concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all statutory requirements and requirements
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`under 37 C.F.R. §§ 42.104, 42.105 and 42.15 and thus should be accorded a filing
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`date as the date of filing of this Petition pursuant to 37 C.F.R. § 42.106.
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`A. GROUND FOR STANDING
`Pursuant to § 42.104(a), Petitioner hereby certifies that the 794 Patent is
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`available for IPR and that the Petitioner is not barred or estopped from requesting
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`IPR challenging claims of the 794 Patent on the grounds identified herein.
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`Specifically, Petitioner has the standing, or meets all requirements, to file this
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`Petition under 35 U.S.C. §§ 315(a)(1), 315(b), 315(e)(1) and 325(e)(1); and 37
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`C.F.R. §§ 42.73(d)(1), 42.101 and 42.102.
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`IDENTIFICATION OF CHALLENGE
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`B.
`Pursuant to 37 C.F.R. §§ 42.104(b) and 42.22, the precise relief requested is
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`that the Board institute an IPR trial on Claims 1 and 2 and cancel the claims
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`because they are invalid on the grounds and evidence presented in this Petition.
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`Claims Challenged: Claims 1 and 2 are challenged in this Petition.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`The Prior Art: The prior art references relied upon are 7 references listed in
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`the Exhibit List: (1) Potmesil (Ex. A of Ex. 1002); (2) Hornbacker (Ex. 1003); (3)
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`Ligtenberg (Ex. 1004); (4) Rutledge (Ex. 1005); (5) Cooper (Ex. 1006); (6) Migdal
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`(Ex 1007); and (7) Lindstrom (Ex. 1011 and associated Ex. 1012 and Ex. 1013).
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`Supporting Evidence Relied Upon For The Challenge: The Declaration of
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`Prof. William R. Michalson (Ex. 1008) supporting the invalidity grounds in this
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`Petition and other supporting evidence in the Exhibit List are filed herewith.
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`Statutory Ground(s) Of Challenge And Legal Principles: Pursuant to 37
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`C.F.R. § 42.104 (b)(2), the review of patentability of claims 1 and 2 requested in
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`this Petition is governed by pre-AIA 35 U.S.C. §§ 102 and 103 that were in effect
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`before March 16, 2013. Further, statutory provisions of 35 U.S.C. §§ 311 to 319
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`and 325 that took effect on September 16, 2012 govern this IPR.
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`Claim Construction: The 794 Patent has not expired. In IPR, the Office shall
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`give a claim in an unexpired patent “its broadest reasonable construction in light of
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`the specification of the patent in which it appears” to one of ordinary skill in the art.
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`37 C.F.R. § 42.100(b). SAP v. Versata, CBM2012-00001, Final Written Decision
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`at 10 (PTAB June 11, 2013), Paper No. 70 and In re Cuozzo Speed Technologies,
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`LLC, No. 2014-1301 at 11-19 (Fed. Cir. Feb. 4, 2015).
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`How Claims Are Unpatentable Under Statutory Grounds: Pursuant to 37
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`C.F.R. § 42.104 (b)(4), Section VI provides an explanation of how claims 1 and 2
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`are unpatentable under pre-AIA 35 U.S.C. § 103, including the identification of
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`where each element of the claim is found in the cited prior art.
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`IV. OVERVIEW OF THE 794 PATENT
`The 794 Patent is entitled “System and methods for network image delivery
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`with dynamic viewing frustum optimized for limited bandwidth communication
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`channels” and was granted on Nov. 21, 2006 from non-provisional App. No.
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`10/035,981 filed on Dec. 24, 2001. Per USPTO record, in 2009, the 794 Patent was
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`originally assigned by the inventors to 3DVU, Inc., which subsequently assigned
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`the patent to Inovo Ltd. On Jun. 17, 2013, Inovo assigned the 794 Patent to
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`Bradium. The App. No. 10/035,981 has no direct child applications. There has
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`been no post-issuance proceeding on the 794 Patent.
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`PRIORITY DATE OF THE 794 PATENT
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`A.
`The 794 Patent claims priority to six provisional applications: App. Nos.
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`60/258,488, 60/258,489, 60/258,465, 60/258,468, 60/258,466, and 60/258,467, all
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`filed on Dec. 27, 2000. No other priority claims were made. Based on the USPTO
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`record, the earliest priority date of the 794 Patent is no earlier than Dec. 27, 2000.
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`During original examination of the 794 Patent, the applicant submitted two
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`declarations of inventors in an attempt to swear behind prior art cited by the
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`Examiner, claiming an alleged earlier pre-filing invention date of October 1999.
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`For purpose of this IPR proceeding, this Petition cites and relies on references
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`dated before October 1999. As such, it is unnecessary to examine, in this
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`proceeding, whether the evidence filed with the two declarations of the inventors in
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`the original examination is sufficient for establishing an alleged earlier invention
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`date before the earliest priority date of the 794 Patent.
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`SUMMARY OF THE 794 PATENT
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`B.
`The “Background of the Invention” of the 794 Patent describes a “well
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`recognized problem” of how to reduce the latency for transmitting full resolution
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`images over the Internet on an “as needed” basis, particularly for “complex images”
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`such as “geographic, topographic, and other highly detailed maps.” Ex. 1001 at
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`1:32-47. The 794 Patent admits that solutions already in existence included
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`“transmitting the image in highly compressed formats that support progressive
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`resolution build-up of the image within the current client field of view.” Id. at
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`1:48-58. The 794 Patent contends, however, that such “conventional” solutions,
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`like the ones described in U.S. Pat. Nos. 4,698,689 (Tzou) and 6,182,114 (Yap),
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`usually “presume that client systems have an excess of computing performance,
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`memory and storage” and are “generally unworkable for smaller, often dedicated
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`or embedded” clients. Id. at 1:48-2:55. According to the 794 Patent, the
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`conventional solutions do not work well under “limited network bandwidth”
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`situations. Id. at 3:4-29.
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`To address these perceived issues in the existing art, the 794 Patent purports
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`to disclose a system capable of “optimally presenting image data on client systems
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`with potentially limited processing performance, resources, and communications
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`bandwidth.” Id. at 3:38-42.
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`Specifically, the 794 Patent
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`describes an image distribution
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`system having a network image
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`server and a client system, where a
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`client can input navigational command to adjust a 3D viewing frustum for the
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`image displayed on the client system. Id. at 5:23-53. High-resolution source image
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`data is pre-processed by the image server into a series K1-N of derivative images of
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`progressively lower image resolution. Id. at 5:54-6:6, Fig. 2. The source image is
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`also subdivided into a regular array of 64 by 64 pixel resolution image parcels
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`(a.k.a. image tiles), and each image parcel may be compressed to fit into a single
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`TCP/IP packet for faster transmission. Id. at 6:6-22; 7:30-49.
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`The client system
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`in the 794 Patent has a
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`“parcel request”
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`subsystem to request
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`image parcels from the
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`server, a “control block”
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`that directs the transfer of received image parcels and overlay data to a local parcel
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`data store. Id. at 6:42-62. The control block decompresses the image parcels and
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`directs a “rendering engine” to render them. Id. at 6:63-65; Fig. 3.
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`When the viewing point is changed in response to a user navigation
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`command, the control block “determines the ordered priority of image parcels to be
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`requested from the server . . . to support the progressive rendering of the displayed
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`image.” Id. at 7:19-22. Image parcel requests are then placed in a request queue,
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`and are to be issued by the parcel request subsystem according to each request’s
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`assigned request priority. Id. at 7:22-24; 8:24-36. Although various factors may
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`affect the priority assigned to a parcel request, e.g., the “resolution of the client
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`display” (8:54-9:4) or whether the image parcel is “outside of the viewing frustum”
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`(9:26-29), generally speaking, “image parcels with lower resolution levels will
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`accumulate greater priority values,” so “a complete image of at least low resolution
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`will be available for rendering” in a fast manner (10:11-19). In addition, the control
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`parameter for calculating the priority can be set in a way that gives “higher priority
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`for parcels covering areas near the focal point of the viewer” to make sure that
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`image parcels are requested “based on the relative contribution of the image parcel
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`data to the total display quality of the image.” Id. at 10:20-38.
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`In the 794 Patent, after the needed image parcels are requested and received,
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`an algorithm is used to select the image parcels for rendering and display. Id. at
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`8:37-42. Overlay data may also be added to the display if its image coordinates
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`matches the current image parcel location. Id. at 8:46-51. The 794 Patent discloses
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`that two-dimensional image parcels are displayed in a three-dimensional space
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`using projection transform. Id. at 5:44-53; 7:9-18; 8:37-41; 10:20-26; 10:63-67.
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`The 794 Patent states that its disclosed technology can achieve faster image
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`transfer by (1) dividing the source image into parcels/tiles, (id. at 6:1-16), (2)
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`processing the parcels/tiles into a series of progressively lower resolution
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`parcels/tiles, (id.) and (3) requesting and transmitting the parcels/tiles needed for a
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`particular viewpoint in a priority order, generally lower-resolution tiles first. Id.
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`3:38-4:42.
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`Claims 1 and 2 are the only claims in the 794 Patent. As shown by this
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`Petition, the 794 Patent is merely repetitive of the long history of prior art
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`publications on relevant technical features that the Patent Owner attempts to claim
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`as its own years later. See, e.g., Michalson’s Declaration in Ex. 1008, ¶¶ 33-77 in
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`“VI. TECHNOLOGY BACKGROUND OF THE 794 PATENT.” As shown in
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`Section VI, all of the features and the combinations in claims 1 and 2 were known
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`or predictable and/or obvious combinations of the prior art features, and were
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`published prior to the earliest priority date of the 794 Patent. Also see id., ¶¶ 95-
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`277. Besides the invalidity grounds in Section VI, Prof. Michalson opines that
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`claims 1 and 2 are obvious for additional grounds. Id., ¶¶ 278-385. Claims 1 and 2
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`reflect the Patent Owner’s belated effort to “re-patent” subject matter that was
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`already in the public domain.
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`SUMMARY OF PROSECUTION FILE HISTORY
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`C.
`The 794 Patent was granted from U.S. non-provisional App. No. 10/035,981.
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`In the examination of App. No. 10/035,981, the Examiner initially rejected all
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`pending claims on Sept. 21, 2005 under § 102(e) as anticipated by U.S. Pat. No.
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`6,671,424 (“Skoll”). In response, Applicants attempted to swear behind the Skoll
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`reference, claiming that “Skoll’s application for his US patent 6,671,424 was filed
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`25 July, but the Inventors herein developed their invention in November 1999 and
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`had a working model in December 1999 and January 2000.” Applicants’ Response
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`at 2 (Jan. 10, 2006). Applicants submitted two declarations of inventors, dated Dec.
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`2005 and Jun. 2006, respectively, to support an contended earlier pre-filing
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`invention date of October 1999. Declaration of Inventor at 2 (“The herein
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`invention was first defined in October 1999, we had a working model in December
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`1999 and we can establish that we had the first working product on about 24
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`January 2000.”) (Dec. 27, 2005); see also Declaration of Inventor at 1 (Jun. 13,
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`2006). The Examiner rejected the first declaration as insufficient (Final Rejection
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`dated Mar. 14, 2006) and accepted the second declaration. The Examiner issued
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`claims 1 and 16 of the original application with Examiner’s Amendments as the
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`patent claims 1 and 2. Examiner’s Amendment & Reasons for Allowance (Aug. 21,
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`2006).
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`As shown by the cited prior art references in this Petition, the Examiner
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`relied on an incomplete record of relevant prior art during the examination and thus
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`did not know that the subject matter of the issued claims 1 and 2 in the 794 Patent
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`was well known and published by others before its filing date and thus was not
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`patentable.
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`In addition, the file history contains no discussions on the prior art U.S.
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`Patent No. 6,182,114 (Yap) that is listed on the face of the 794 Patent and is
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`mentioned in the “Background of the Invention” of the 794 Patent. This lack of
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`discussion of the Yap reference with respect to claims 1 and 2 is an oversight by
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`the Examiner because the disclosure of the Yap reference is highly relevant and is
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`material to the patentability of claims 1 and 2. Notably, Prof. Michalson opines
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`that claims 1 and 2 are obvious over the Yap reference in view of additional prior
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`art. Ex. 1008, ¶¶ 340-384.
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`This Petition is a remedial measure for correcting the unfortunate outcome
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`of issuing the invalid claims 1 and 2 in the 794 Patent due to the lack of a fuller
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`and more complete record of relevant prior art and due to lack of adequate
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`consideration of relevant teaching in the cited prior art in the original examination.
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`D. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (POSITA) for the 794 Patent should
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`Petition for Inter Partes Review of U.S. Pat. No. 7,139,794 B2
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`have a Master of Science or equivalent degree in electrical engineering or
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`computer science, or alternatively a Bachelor of Science or equivalent degree in
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`electrical engineering or computer science, with at least 5 years of experience in a
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`technical field related to geographic information system (“GIS”) or the
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`transmission of image data over a computer network. Ex. 1008 at ¶¶ 28-32.
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`PROPOSED CLAIM CONSTRUCTION
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`E.
`Petitioner proposes construction of certain claim terms below pursuant to the
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`broadest reasonable interpretation (BRI) standard for inter partes review. The
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`proposed BRI claim constructions are offered only to comply with 37 C.F.R.
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`§§ 42.100(b) and 42.104(b)(3) and for the sole purpose of this Petition, and thus do
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`not necessarily reflect appropriate claim constructions to be used in litigation and
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`other proceedings where a different claim construction standard applies.
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`The proposed BRI claim construction for the terms in claims 1 and 2 is plain
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`and ordinary meaning of each term in light of the 794 Patent specification.
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`For example, “First fixed size” and ”Second fixed size” in Claim 1 are given
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`their plain and ordinary meaning in light of the specification, e.g., Ex. 1001 6:6-22
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`and 7:28-46, which teach that image data parcels are delivered as 2 Kbyte
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`compressed data packets and are rendered as 8 Kbyte image parcels. Ex. 1008, ¶
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`93.For example, the term “parcel rendering subsystem” in Claim 1 is given its
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`plain and ordinary meaning in light of the specification, e.g., Ex. 1001 at 6:44-47,
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`6:65-67, 7:4-8, and Fig. 3. Ex. 1008, ¶ 93. For example, the term of “parcel request
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`subsystem” is given its plain and ordinary meaning in light of the specification,
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`e.g., Ex. 1001 at 6:44-51 and Fig. 3. Ex. 1008, ¶ 93. As another example, the term
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`“image parcel” is given its plain and ordinary meaning in light of the Ex. 1001 at
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`6:1-16 and FIG. 2. As yet another example, the term “image data parcel” in claims
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`1 and 2 is given its plain and ordinary meaning. The specification of the 794 Patent
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`uses the terms “image data parcel” and “image parcel data” interchangeably, e.g.,
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`Ex. 1001 at 3:38-4:42 (“Summary of the Invention”). Alternatively, to the extent
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`that the term “image data parcel” needs construction under BRI, Petitioner
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`construes “image data parcel” to mean “data representing an image parcel” in light
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`of the 794 Patent specification.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 794 PATENT IS UNPATENTABLE
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`Claims 1 and 2 are unpatentable under pre-AIA 35 U.S.C. § 103(a) for
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`merely reciting known, predictable and/or obvious combinations of the cited prior
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`art references.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`A.
`All seven (7) prior art references cited in this Petition were not on record
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`during the original examination of the 794 patent.
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`Potmesil was published in September 1997 and is prior art under at least §
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`102(b). Hornbacker was filed as a PCT application No. PCT/US1998/003017 on
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`Feb. 12, 1998 and published on Aug. 19, 1999. Hornbacker is prior art under at
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`least § 102(b). An European patent No. EP1070290 (Ex. 1010) was granted from
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`an European application No. 98906484.5 as a national phase application of the
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`PCT application No. PCT/US1998/003017. Lindstrom was published in March
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`1997 and is prior art under at least § 102(b). See also Ex. 1012 and Ex. 1013
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`regarding Lindstrom. Ligtenberg was filed on Nov. 8, 1995 and issued on Oct. 28,
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`1997. Ligtenberg is prior art under at least § 102(b). Rutledge was filed on July 28,
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`1997, which is a continuation-in-part of application no. 08/824,106, filed on Mar.
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`25, 1997, which is a continuation-in-part of application no. 08/613,307, filed on
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`Mar. 11, 1996. Rutledge was patented on Nov. 18, 2003. Rutledge is prior art
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`under at least § 102(e). Cooper was filed on April 2, 1998 and patented on Migdal
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`was filed on November 6, 1995 and issued on June 2, 1998. Migdal is prior art
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`under at least § 102(b).
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`SUMMARY OF INVALIDITY POSITIONS
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`B.
`The cited prior art references in this Petition, not previously before the
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`Office, disclose systems and methods of subdividing large images into a regular
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`array of tiles, compressing these tiles into a series of reduced-resolution tiles,
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`requesting image tiles of various resolutions in a priority order based on the user’s
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`viewpoint, and rendering the received image tiles for display on a client device.
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`This Petition uses two primary references, (1) Potmesil and (2) Rutledge, to form
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`independent and distinctive invalidity positions against claims 1 and 2, and further
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`combines these references with (3) Hornbacker, (4) Lindstrom, (5) Ligtenberg, (6)
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`Cooper and (7) Migdal to reject claims 1 and 2. These references are selected
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`because of their distinctive teachings that cover different technical aspects of the
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`794 Patent and provide the Office and the public with a fuller view of the prior art
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`landscape prior to the filing of the 794 Patent that was not discussed or duly
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`considered during the original examination.
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`Specifically, claim 1 is rendered obvious by (1) Potmesil in view of
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`Hornbacker and further in view of Lindstrom, and (2) Rutledge in view of
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`Ligtenberg and Cooper, and claim 2 is rendered obvious by (1) Potmesil in view of
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`Hornbacker and further in view of Lindstrom and (2) Rutledge in view of
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`Ligtenberg, Cooper and Migdal.
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1 AND 2 OF THE 794 PATENT
`A. GROUND 1: CLAIMS 1 AND 2 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103(a) AS BEING OBVIOUS OVER POTMESIL,
`HORNBACKER, AND LINDSTROM
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`Potmesil, Hornbacker, and Lindstrom disclose similar technologies for
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`retrieving images from networked servers using Internet web browsers and HTTP
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`protocol and provide solutions to similar technical issues.
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`Potmesil teaches an online system that includes map servers and software
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`operating on a client computer, and that allows users to view geographic
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`information over the worldwide web (WWW) using 2D or 3D map browsers and
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`Hypertext Transfer Protocol (HTTP) protocol. Ex. 1002 at Abstract. The Potmesil
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`system includes a “tile server” which stores images such as aerial images and
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`elevation data in a power-of-two pyramid to allow fast access and scroll and zoom
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`operations. Id. at Fig. 1, 1329-30. Potmesil teaches that the use of prefiltered
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`power-of-two images for texture mapping was well-known in the art, including in
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`the OpenGL standard used for rendering in the 3D browser. Id. at 1334, 1340. In
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`the OpenGL standard, such tiles are referred to as “mip-maps,” the same term used
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`for image tiles in the provisional applications from which the 794 Patent claims
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`priority. Ex. 1002 at 1329; Ex. 1009 (Provisional Application No.60/258,465) at
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`7:12-9:4. The 2D and 3D geographical map browsers implement a tile caching
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`process which calculates the tiles needed to render the current view and tiles likely
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`to be needed in the future, requests those tiles from the server, and caches those
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`tiles. For example, in a “flight simulator” mode, the 3D browser requests and
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`caches tiles from the flight path ahead of the user’s simulated viewpoint. Ex. 1002
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`at 1332-33, Fig. 2. Image tiles may be compressed using a variety of formats such
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`as JPEG or GIF. Id. at 1334-35. Potmesil teaches that the geographical system
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`outlined in the paper may be used in a variety of applications such as traditional
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`computers, notebook computers (NCs), Interactive TVs (ITV’s), cellular phones,
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`and heads-up displays on car windshields. Ex. 1002 at 1328.
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`In addressing similar retrieving images over the Internet web browsers and
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`HTTP protocol as in Potmesil, Hornbacker teaches a method and a system for
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`displaying portions of very large images (such as digital documents) retrieved over
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`a network from a server. The Hornbacker system includes a web server networked
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`to client workstations, which use a web browser on the workstation to request
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`image views by means of Uniform Resource Locator (URL) code using the HTTP
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`protocol. Ex. 1003 at 5:3-8, 5:16-25. The large images to be transferred are divided
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`into 128X128 pixel view tiles, which are further organized into a hierarchy of tiles
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`at differing resolutions spaced by factors of two. The image tiles may be
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`compressed using GIF compression with a typical compression ratio of 4:1.
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`In the same technology field as Potmesil and Hornbacker, Lindstrom teaches
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`an online client/server system for viewing large-scale geographic data, e.g. terrain
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`elevation and imagery data, using a 3D perspective view with multiple windows.
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`Ex. 1004, Abstract, §§ 1, 3, 4.1, 4.2.6, Fig. 1. Lindstrom uses a pyramidal quadtree
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`structure to organize multi-resolution terrain and image data in a hierarchical
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`manner, processes requests for image tiles using a prioritized queue and an image
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`cache, and utilizes level-of-detail (LOD) management that limits texel resolution to
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`a defined threshold. Id., Abstract, §§2, 3, 4, 4.1, 4.2.1, 4.2.2, 4.2.3. Ex. 1008, ¶¶
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`100.1, 100.2.
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`A person of ordinary skill in the art (POSITA) would be motivated to
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`combine teachings in Potmesil, Hornbacker, and Lindstrom because each reference
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`addresses the common technical issues in visualizing large amounts of data
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`obtained over a data network as such the Web via HTTP protocol and in using a
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`client viewing device with much smaller memory than the database which stores
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`the imagery data. Ex. 1008, ¶ 104. In this regard, Potmesil, Hornbacker, and
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`Lindstrom address similar or the same technical problems in rendering the images
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`on the client device from image data received over a data network (e.g. optimizing
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`bandwidth, prioritizing use of bandwidth, determining which portions of a larger
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`set of image data to request, etc.). Id. Potmesil and Lindstrom specifically disclose
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`technology for 2D and 3D visualization of terrain and map data.
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`A POSITA would recognize that Lindstrom teaches a substantially similar
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`online system to Potmesil with similar goals, and that the prioritization queueing
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`and level-of-detail management of Lindstrom would provide similar advantages to
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`speeding up processing in the system of Potmesil, particularly in view of the
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`related teaching in Potmesil that the tiles are stored and accessed in a power-of-two
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`pyramid and that the caching algorithm sorts requested tiles based on their
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`proximity to the user. Ex. 1002, 1329-30, 1332-33, Figs. 1-2, Ex. 1008, ¶¶ 100.1,
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`100.2. To a POSITA, the teachings of Hornbacker are readily applicable to online
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`mapping references bec