UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VENTANA 3D, LLC
`Petitioner
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`v.
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`HOLOGRAM USA, INC.
`Patent Owner
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`Inter Partes Review No. IPR2016-00133
`Patent 5,865,519
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`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VENTANA 3D, LLC
`Petitioner
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`v.
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`HOLOGRAM USA, INC.
`Patent Owner
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`Inter Partes Review No. IPR2016-00133
`Patent 5,865,519
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`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`Petitioner’s Exhibit List
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`IPR2016-00133
`Patent 5,865,519
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`Exhibit
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`Description
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`1001
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`U.S. Patent No. 5,865,519 (the “ʼ519 Patent”)
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`1002
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`Australian Patent No. AU 77725/87 (“St. George”)
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`1003
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`U.S. Patent No. 5,573,325 (“Lekowski”)
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`1004
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`U.S. Patent No. 5,585,967 (“Monroe”)
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`1005
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`U.S. Patent No. 4,805,895 (“Rogers”)
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`1006
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`German Patent Application DE 3808406A1 (“Lettner”)
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`1007
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`French Patent Application FR 2714741A1 (“Cohen”)
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`1008
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`U.S. Patent No. 1,019,141 (“Englesmann”)
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`1009
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`U.S. Patent No. 3,549,803 (“Cletus”)
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`1010
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`U.S. Patent No. 5,528,425 (“Beaver”)
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`1011
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`1012
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`1013
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`ALBERT A. HOPKINS, MAGIC: STAGE ILLUSIONS, SPECIAL
`EFFECTS AND
`TRICK PHOTOGRAPHY (1901).
`O. A. Battista, MYLAR® --The New Synthetic Film, POPULAR
`SCIENCE, Sept. 1995.
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`Jeffrey A. Hart, The Politics of HDTV in the United States, POL’Y
`STUD. J., Vol 22 No. 2 (June 1994)
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`1014
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`JIM STEINMEYER, THE SCIENCE BEHIND THE GHOST (2013)
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`1015
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`Expert Declaration – Marshall Monroe
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`1016 Mitsuru Hayakawa, ILA/D-ILA Super Projectors for the Present and
`the Future, Victor Company of Japan, Limited (JVC), 2000.
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`1017
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`ROBERT FORSYTH, JAGDGESCHWADER 7 ‘NOWOTNY’ (2008)
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`1018
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`GRAHAM WALNE, EFFECTS FOR THE THEATER (1995)
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`1019
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`Theater Projects Consultants, Size Matters: How a growing American
`audience affects the size and costs of performing arts spaces (July
`2010).
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`IPR2016-00133
`Patent 5,865,519
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`I. INTRODUCTION
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`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., VENTANA, 3D,
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`LLC (“Petitioner”) requests inter partes review of claims 1‒3, 6‒8, and 10 (the
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`“Challenged Claims”) of U.S. Patent No. 5,865,519 (“the ’519 Patent,” Ex. 1001),
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`which issued on Feb. 2, 1999. The Board is authorized to deduct all required
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`fees from Deposit Account No. 127660.
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`II. MANDATORY NOTICES
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`1. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
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`For purposes of this Petition only, Petitioner identifies (in addition to
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`Petitioner itself) the following real parties-in-interest: Ashley Crowder and
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`Benjamin Conway. This identification is made out of an abundance of caution. It is
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`Petitioner’s view that only Petitioner has control or the opportunity to control the
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`instant proceeding or otherwise meets the requirements of 35 U.S.C. § 312(a).
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`2. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The following matter may effect, or be effected by, a decision in this
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`proceeding: Hologram USA, Inc. et al. v. VNTANA 3D, LLC et al., Civil Action
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`No. 14-cv-09489
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`(C.D. Cal.)
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`(the “Litigation”); Hologram USA,
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`Inc.
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`IPR2016-00133
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`et al. v. Pulse Evolution Corporation et al, Civil Action No. 2:14-cv-00772 (D.
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`Nev.); Hologram USA, Inc. et al. v. Arena3D Industrial Illusion, LLC et al., Civil
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`Action No. 2:14-cv-01695 (E.D.LA); Crypton Future Media, Inc. v. Hologram
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`USA, Inc. et al., Civil Action No. 1:14-cv-01247 (D. Del.).
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`3. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Lead counsel: James M. Behmke (Reg. No. 51,448)
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`Back-up counsel: Scott W. Parker (to be admitted pro hac vice)
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`4. Service Information (37 C.F.R. § 42.8(b)(4))
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`Email: james.behmke@piblaw.com and scott.parker@piblaw.com.
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`Post: James M. Behmke, Parker, Ibrahim & Berg, LLC, One Financial
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`Center, Boston, MA 02111 and Scott W. Parker, Parker, Ibrahim & Berg, LLC, 270
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`Davidson Avenue, Somerset, NJ 08873.
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`Phone: 617.918.7602 (Behmke) and 908.333.6220 (Parker);
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`Fax: 617.918.7878 (Behmke) and 908.333.6230 (Parker).
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`Petitioner consents to electronic service.
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`III. GROUNDS FOR STANDING
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`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’519 Patent is
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`available for inter partes review, and that Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the Challenged Claims on the
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`grounds identified in this Petition. The ’519 Patent has not been subject to a
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`previous estoppel-based proceeding of the AIA, and Petitioner was served with the
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`original complaint in the above-referenced Litigation within the last 12 months.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
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`1. Claims for which Review is Requested (37 C.F.R. § 42.104(b)(1))
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`Petitioner requests the review and cancellation as invalid of claims 1‒3, 6‒8,
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`and 10 of the ’519 Patent.
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`2. Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
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`For the reasons presented below, Petitioner seeks the following relief:
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`Ground 1: Invalidation of claims 1‒3, 6‒8, and 10 under 35 U.S.C.
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`§ 103(a) based on St. George (Australian Patent No. AU 77725/87 – Ex. 1002),
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`published March 3, 1988, and Lekowski, filed June 8, 1994, and based on Cohen
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`(French Patent Application FR 2714741A1), filed Dec. 30, 1993, and based on
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`Lettner German Patent Application DE 3808406A1, filed Sept. 29, 1987.
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`Ground 2: Invalidation of claims 1‒3, 6‒8, and 10 under 35 U.S.C. §
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`103(a) based on Lekowski (U.S. Patent No. 5,573,325 – Ex. 1003) issued Nov. 12,
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`1996 and filed Jun. 8, 1994, and Lettner (German App. No. DE 3808406A1), filed
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`Sept. 29, 1987, and based on Cohen (French Patent Application FR
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`2714741A1), filed Dec. 30, 1993.
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`As explained in detail below, these grounds are not cumulative of each other
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`and all are required to fully explain the invalidity of the challenged claims.
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`V. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§ 42.22(a)(2) AND 42.104(b)(4)
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`A. Background
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`1. The ’519 Patent
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`The ʼ519 Patent discloses an apparatus for creating a stage illusion whereby
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`images projected from an image source are reflected off a reflecting surface
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`positioned on the floor of a stage to an inclined transparent foil positioned on the
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`stage and appear virtually behind the foil. Ex. 1001 at Abstract. Because the foil
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`is transparent, audience members can see real objects behind it, in the background
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`area of the stage. Id. at 2:9-14; 4:3-16. As the ʼ519 Patent describes, this effect is
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`similar to an item on the dashboard of a car being projected off the windshield so
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`that it appears at a distance outside of the car in front of the windshield. Id. at 2:3‒
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`9.
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`FIG. 2 of the ʼ519 Patent illustrates the purported invention as claimed. An
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`image source (12) is arranged at the ceiling (32) of a stage (28) in front of the
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`upper end of transparent smooth foil (20) so that an image is directed onto a
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`reflecting surface (18) on the floor (30) of the stage (28). Id. at claim 1.
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`According to the ʼ519 Patent, the image displayed on reflecting surface (18) is
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`reflected “in” the smooth transparent foil (20) “in such a way” that the image
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`appears to the audience as virtual image (26) behind the foil.1 Id. at 2:9-19; 3:61‒
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`67.
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`1 The depiction in FIG. 2 is inaccurate. As seen in the annotated version of FIG. 2
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`above, virtual image (26) would appear just behind the beam-splitter (20) and in
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`front of the presenter, equidistant from beam-splitter as the reflecting surface. The
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`virtual image will not be in plane 26. In addition, presenter (40) could not “move
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`Though foil is not defined, the ʼ519 Patent describes some properties of a
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`foil that are “particularly well suited for the purposes according to the invention”:
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`it preferably lacks inclusions, is very smooth on its front and rear sides, is very
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`thin, and reflects between 30 and 50% of the light impinging on it. Ex. 1001 at
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`2:50‒59. The ʼ519 Patent further states that the foil is under high-tensile stress and
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`held tautly smooth while in use, but can also be wound, all of which implies that
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`the foil is a flexible material. Id. at 2:48‒50; 2:66‒67. However, the ’519 Patent
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`does not disclose any specific material for the foil. Materials that can fulfill these
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`preferable properties include semi-transparent polymeric or plastic thin films, such
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`as MYLAR® polyester film.2 Ex. 1015 at ¶ 79. Moreover, materials with these
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`properties can function as an optical beam-splitter or combiner (Ex. 1015 at ¶ 79),
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`though the ʼ519 Patent does not use either term. Petitioner’s uses of “beam-
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`splitter” and “semi-transparent beam-splitter” herein are meant as references to a
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`Pepper’s Ghost component that includes the “transparent smooth foil” of the
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`Challenged Claims. See Ex. 1015 at ¶ 58.
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`freely in front of” virtual image (26) as represented by the ʼ519 Patent because the
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`image is reflected from the reflecting surface (18) off the beam-splitter (20) to the
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`audience and the presenter (40) is not in front of the beam-splitter. Id. at 4:26‒31;
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`See generally Ex. 1015 § VII.C.
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`2 As used herein, MYLAR® ® signifies MYLAR® brand polyester film.
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`2. Pepper’s Ghost Configuration
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`The stage illusion configuration bearing the name Pepper’s Ghost stems
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`from an illusion popularized by John Henry Pepper in 1862. Ex. 1014 at 21‒22.3
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`Pepper situated a large sheet of glass on a stage angled toward the audience. Id. at
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`22. Underneath the stage, hidden from view of the audience, stood an actor in
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`ghost attire lit by a projection lamp. Id. The image of the ghost reflected off the
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`glass beam-splitter and appeared as an aberration behind the beam-splitter on the
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`stage. Id.
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`3 A citation to “21” of Ex. 1014 is a citation to the page of Ex. 1014 bearing the
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`original page number 21. Likewise, a citation to “Ex. 1015 at ¶ 10” signifies a
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`citation to exhibit 2015 paragraph 10. Finally, a citation to “Ex. 1002 at 3:10” is a
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`citation to column 3, line 10 of exhibit 1002. These approaches are taken
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`throughout the IPR, including in the Declaration.
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`Notably, John Pepper was neither the first nor the last to use this special
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`effect to entertain an audience. See Ex. 1014 at 5‒20 (chronicling Pepper’s Ghost
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`illusions in existence prior to John Pepper’s configuration). As special effects
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`gained popularity, other Pepper’s Ghost configurations emerged. For example, the
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`Amphitrite Illusion (shown in the inset image), also from the 19th century, uses a
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`beam-splitter angled at 45° toward the audience so that an actor laying on a
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`rotating platform can appear to fly and spin in midair. Ex. 1011 at 61‒62.
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`Numerous other Pepper’s Ghost configurations have been used throughout the last
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`two centuries. See Ex. 1014 at Introduction to the New Edition. Just one year after
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`the original Pepper’s Ghost configuration, a variation suitable for theaters without
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`an under-stage area was proposed in which the beam-splitter was angled to one
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`side so that the actors could stand
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`off to one side of the stage (see
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`inset image to left). Id. at 52.
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`The Pepper’s Ghost effect
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`works by reflecting a luminous
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`source off a semi-transparent
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`beam-splitter. Ex. 1015 at ¶ 49. The original luminous sources were typically
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`actors below the stage lit by lime candles (hence the phrase limelight). Id. at ¶ 31.
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`But as moving pictures became commonplace, film projectors were incorporated
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`into the illusion as they served as the luminous source. Id. at ¶ 49. For example, a
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`1912 patent to Engelsmann shows two projectors aimed at a reflecting surface
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`oriented
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`to reflect the images
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`coming from the projectors off a
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`beam-splitter angled
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`toward
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`the
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`audience. Ex. 1008 at FIG. 1. Over
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`time, Pepper’s Ghost configurations
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`became more complex, but remained
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`based on the core principle of
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`reflecting a luminous source off a
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`semi-transparent beam-splitter so that the audience sees the image in the
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`background of the stage. The luminous source could be a lighted subject, a screen
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`lit by a projector, a television set, or even a lightbulb itself. Ex. 1014 at 4, 24; Ex.
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`1008 at FIG. 1; Ex. 1006 at FIG. 1; Ex.
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`1015 at 52.
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`In the latter half of the 20th century,
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`Pepper’s Ghost
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`configurations were
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`incorporated
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`in
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`new
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`avenues
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`of
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`entertainment, such as amusement parks,
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`trade show exhibits, and arcade games. Ex. 1015 at ¶ 49. Disney used them in the
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`Haunted Mansion in 1969, Epcot’s Computer Central in 1983, and Epcot’s
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`Horizon’s Pavilion in 1983. Id. at ¶ 12. Others followed, with the Spirit Lodge at
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`the Vancouver EXPO in 1986, and Knott’s Mystery Lodge in 1994. Id.
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`Theme parks were not the only industries
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`utilizing Pepper’s Ghost configurations. Defense
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`contractors used it in military applications for
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`decades, especially with aircraft heads-up
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`displays and simulators. Id. at ¶ 42. One of the
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`first was a 1937 design for a bomb site that displayed a source image underneath a
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`beam-splitter oriented at 45° to the viewer. Ex. 1017 at 72. This design spurred an
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`entire industry of heads-up displays and teleprompters having clear glass or acrylic
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`beam-splitters oriented with the source image below the beam-splitter, which was
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`angled toward the viewer. Ex. 1015 at ¶ 42.
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`With
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`the advent of arcade games,
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`developers
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`borrowed
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`Pepper’s
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`Ghost
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`configurations from military applications to
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`create improved game experiences. For
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`example, the SEGA Shooting Master game from
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`1984 displayed on a CRT near the bottom of the game (see inset image to left) a
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`source image that was reflected off a beam splitter so as to appear behind the game
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`itself. Id. at ¶ 45.
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`Eventually,
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`the
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`implementation
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`of
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`special
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`effects
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`in
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`theater design
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`became its own trade.
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`3. A Person of
`Ordinary Skill in
`the Art
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`A person of ordinary
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`skill in the art at the relevant
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`time (“POSITA”), which for the purpose of this proceeding can be no earlier than
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`the August 31, 1996 filing date of the PCT application because all of the prior art
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`cited herein is §102(b) prior art to that PCT filing date (see 35 U.S.C. § 119(a)
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`(pre-AIA)), would have had 10‒12 years of training and experience in the field of
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`live entertainment special effects design and engineering, such as in theaters and
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`theme parks. Id. at ¶ 67. Alternatively, a POSITA would have had a bachelor’s
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`degree in engineering and 6‒9 years of such experience. Id.
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`B. Explanation of Skills and Knowledge
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`A POSITA would have been versed in the technical, aesthetic, production
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`process, safety, and regulatory concerns involved in the creation and maintenance
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`of built environments in the theater and entertainment industries. Id. at ¶ 53.
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`This would have included intimate knowledge of rigging techniques, such as
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`the theatrical fly system used to suspend and move set material up and down on a
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`stage. Id. at ¶ 63. A POSITA also would have had experience in scrims and
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`prosceniums, occlusions, stage walls, mullions, selective lighting, and other set
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`dressing elements. Id. at ¶ 60‒62. A POSITA would have understood stage
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`lighting and had an understanding of the science of light, with a basic knowledge
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`of optics,
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`including reflection, refraction, and behaviors of wavelengths,
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`electromagnetism, and a notion of the human visual spectrum. Id. at ¶ 61.
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`A POSITA would have had knowledge from the fields of set design, gaming
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`and casino industry, video games and interactive hardware design, rock ʼn roll
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`shows and tours, theme parks and expositions, film and television, and military
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`effects such as heads-up displays and simulators. Ex. 1015 at ¶ 65. At the relevant
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`time, developments in any one of these areas were commonly marketed to
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`professionals in all of them. See Ex. 1016 at 5 (demonstrating military simulator
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`technology at the National Association of Broadcasters trade show); Ex. 1013 at
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`220‒21 (discussing the dual-use technologies for both military and civilian
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`applications).
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`A POSITA would have been very familiar with Pepper’s Ghost
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`configurations. Ex. 1015 at ¶ 49. These configurations have been used for over
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`150 years, including within the lifetime of a POSITA. See generally Ex. 1008
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`(1912); Ex. 1005 (1989).
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`At the relevant time, a POSITA would have had at her disposal a myriad of
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`special effects devices and equipment to use, from scrims to theater fly systems,
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`from projectors to video screens, from sound systems to beam-splitters. See
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`generally Ex. 1015 at § VI. And, at the relevant time, a POSITA would have been
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`versed in the well-known methods of operation of each such devices or pieces of
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`equipment. Id. at ¶ 57.
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`To incorporate special effects at the relevant time, A POSITA would have
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`understood how to tailor the design of a particular special effect to the
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`configuration of a particular venue. Id. at § VIII.A. For example, at the relevant
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`time, some auditoriums were mostly flat, with the audience staring up at the stage.
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`Others, at the relevant time, like opera houses, situated the audience above the
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`stage so the audience could view the stage and the orchestra below. Id. at ¶ 60. At
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`the relevant time, some stages included a subfloor with an under-stage area useful
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`for illusions. Id. At the relevant time, other stages relied on, either alternatively or
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`in addition to, a large obscured ceiling area with catwalks. Ex. 1015 at ¶ 60. At
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`the relevant time, to a POSITA, these venue constraints would have dictated the
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`effect decisions, both in selection of illusion components and in placement of
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`them. Id.
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`A POSITA also would have also accounted for the requirements of the
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`performance. Ex. 1015 at ¶ 78. For example, at the relevant time, some shows
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`simply had actors on the stage, with their feet never leaving the ground, while
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`others employed fly systems to propel actors through the air. Id. At the relevant
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`time, some shows required numerous and rapid set changes, while others maintain
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`the same set for the duration of the show. Id. at ¶ Id.
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`A POSITA at the relevant time, therefore, could use established set design
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`principles and components based on the needs of the show and the constraints of
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`the venue. Id. at ¶ Id.
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`If, for example, a theater at the relevant time contained a large sub-stage area
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`and a Pepper’s Ghost illusion was sought, a POSITA may have chosen to position
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`below the stage a projector and rear-view projection screen on the stage floor, as
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`seen in a 1987 reference to
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`St. George. Ex. 1002 at
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`FIG. 1 (below).
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`If, on the other hand,
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`the theater (at the relevant
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`time)
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`placed
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`audience
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`members up high, looking
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`POSITA could not have placed the screen on the floor of the stage because it
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`down on the stage below, a
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`would have been seen by the
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`audience and
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`thus negated
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`the
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`intended theatrical illusion. Ex.
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`1015 at ¶ 78. A POSITA may have
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`then opted to implement the
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`Pepper’s Ghost configuration by
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`placing the projection screen above the stage. See Ex. 1010 at FIG. 4 (shown
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`above). At the relevant time, basic high-school physics would have dictated that
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`the beam-splitter be adjusted so that it reflected the source image from above,
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`rather than below. Id. (as traced by the dotted line W-W).
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`For theaters at the relevant time with no sub-stage area and no obscured
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`ceiling area, but with a large side-stage area, a POSITA may have selected a
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`sideways Pepper’s Ghost configuration, with the projector out to the side of the
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`stage, and the beam-splitter angled from left to right, rather than from top to
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`bottom. Ex. 1002 at FIG. 2 (shown above).
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`At the relevant time, in the situation where no sub-stage existed, and the
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`audience was situated at a level lower than the stage area, and no large side stage
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`area existed, a POSITA’s only option would have been to place the projector above
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`the stage and to project an image to an area of the stage floor that was obscured
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`from the audience’s view. Ex. 1015 at ¶ 78. At the relevant time, this
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`configuration was already well known. Ex. 1006 at FIG. 6 (shown to the right).
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`C. Foils Are Old
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`At the relevant time, incorporating a
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`transparent smooth foil into a Pepper’s Ghost illusion
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`was not new. A semi-transparent polymeric or
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`plastic thin film, such as MYLAR® plastic film, had
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`been used as a beam-splitter since before the ʼ519
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`Patent. Ex. 1015 at ¶ 79. In fact, several prior art
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`Patent 5,865,519
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`references disclose such beam-splitters in the field of stage illusions and in the
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`military industry. See, e.g., Ex. 1003 at 2:33‒35 (“Alternatively, the beam-splitter
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`may comprise a thin flexible material or transparent or semi-transparent film such
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`as a MYLAR®.”); Ex. 1004 at 6:9‒12 (“Beam splitters may be constructed on
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`transparent substrates of glass, plastic, such as acrylic, polycarbonate or
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`MYLAR®, or any other suitable optical material.”); Ex. 1009 at 3:36‒38 (“An
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`alternative mirror structure which has also proven to be extremely lightweight and
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`highly effective is illustrated in FIG. 4. In this laminate a MYLAR® layer 60 has
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`an aluminized coating 62.”).
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`At the relevant time, glass beam-splitters, while preferred for many
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`applications, had known drawbacks in certain applications, including those for
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`stage illusions. A 1989 patent issued to Bob Rogers discusses many of them. Ex.
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`1005. For example, though glass beam-splitters can be fashioned in large sizes, the
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`high cost and availability of large glass plates were acknowledged problems. See
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`Ex. 1005 at 2:20-33 (discussing use of glass beam-splitter (termed a mirror)) and
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`3:39-42 (discussing challenges of cost and availability for same). Furthermore,
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`large glass beam-splitters of a size on the order of 3.8 meters tall and 3 meters wide
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`or larger could sag when inclined, causing unwanted distortion. Id. at 4:12‒26.
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`Mobility of such beam-splitters was also a problem, particularly where rapid set
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`changes were needed. Ex. 1005 at 8:23‒25 (“Larger glass becomes difficult to
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`find, buy, transport, install, and treat.”); Ex. 1009 at 4:11-13 (reflecting value of
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`mobility through highlighting “lightweight, portable” nature of system); Ex. 1015
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`at ¶ 78 (explaining that the needs of a production can dictate complex and rapid set
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`changes). Also, thick beam-splitters sometimes suffered secondary reflections
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`because the source image reflected off the beam-splitter’s front and back surfaces.
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`Ex. 1015 at ¶ 83; Ex. 1004 at 6:12‒13; 6:24‒27.
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`Just as these issues with glass beam-splitters were known in the prior art, so
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`were solutions to avoid them. To overcome the problem of weight, a 1967
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`reference to Cletus teaches using MYLAR® material instead of glass in a beam-
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`splitter in a motion-based simulator. Ex. 1009 at 3:1‒35. Furthermore, at the
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`relevant time, a POSITA, recognizing the mobility issues discussed in Rogers
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`would have therefore had a reason to look to Lekowski, which discloses means to
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`flip a MYLAR® beam-splitter up for storage above the stage. Ex. 1003 at 4:32‒
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`35; see also Ex. 1009 at 3:46-4:3 (portability). Thin MYLAR® material was also
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`suggested as a solution to the problem of secondary reflections. Ex. 1004 at 6:12‒
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`13; 6:24‒27.
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`Semi-transparent polymeric or plastic thin films, such as MYLAR®
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`polyester film, have been employed in numerous configurations for creating an
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`illusion (including a Pepper’s Ghost configuration) in many of the industries in
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`which a POSITA would have been familiar at the relevant time, including stage
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`illusions. See Ex. 1003 at 2:61-3:4 (describing generation of “ghost”) and 2:33‒35
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`(“Alternatively, the beam-splitter may comprise a thin flexible material or
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`transparent or semi-transparent film such as a MYLAR®.”); Ex. 1004 at 5:13-32
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`(describing illusions) and 6:9‒12 (disclosing use of MYLAR® beam-splitter); Ex.
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`1009 at 1:1-16 (describing need for certain virtual image simulator system)
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`and3:36‒46 (suggesting use of MYLAR® material in a beam-splitter for same);
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`Ex. 1018 at 109 (discussing a Pepper’s Ghost illusion using a “large plastic
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`sheet” in an Opera production of Der Freishutz). The ʼ519 Patent, therefore,
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`offered the stage-illusion industry no new components at the time of its filing.
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`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
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`Petitioner requests that the claim terms be given their broadest reasonable
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`interpretation (“BRI”), as understood by a POSITA and consistent with the
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`disclosure. 4 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764
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`(Aug. 14, 2012).
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`“computer-controlled intelligent light amplifier”
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`4 Other forums, such as district courts, apply different standards of proof and claim
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`interpretation. Any interpretation, construction, or application of the Challenged
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`Claims in this Petition (whether implicit or explicit) are specific to the BRI
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`standard. Petitioner reserves the right to revise or depart from its interpretation,
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`construction, or application of the Challenged Claims under any other standard.
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`IPR2016-00133
`Patent 5,865,519
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`The ʼ519 Patent does not define the term “computer-controlled intelligent
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`light amplifier,” but it does state that it is “also known as an ILA.” Ex. 1001 at
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`2:33. In the entertainment industry, ILA refers to a projection device originally
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`developed by Hughes Aircraft and marketed in connection with JVC as an “Image
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`Light Amplifier.” See Ex. 1016 at 1 (“The ILA Projector incorporates a system
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`that enabled for the first time simultaneous achievement of the seemingly
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`conflicting requirements of high brightness and high resolution.”); Ex. 1015 at ¶ 42
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`(explaining that ILA became the industry standard after its debut in 1993). As
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`such, “computer-controlled intelligent light amplifier” should be construed as an
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`image light amplifier, such as that sold by Hughes/JVC beginning in 1993.
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`E. The Challenged Claims Are Invalid Under § 103(a)
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`1. Ground 1 – The Challenged Claims are Obvious Over St. George,
`Lettner and Cohen
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`St. George is directed to a Pepper’s Ghost illusion on a stage having a beam-
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`splitter on the stage oriented with its top end toward the front of the stage, an
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`image translating means disposed under the beam-splitter near the stage floor level,
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`and an image generating means that projects an image onto the translating means.
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`Ex. 1002 at Claim 1 of St. George discloses the following:
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`“a theatrical system having a stage area and, adjacent the stage area, a
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`viewing area in which members of an audience can be accommodated
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`for viewing actual images and/or action on the stage area and/or
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`images perceived as being on the stage area; image generating means
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`offset to one side of, or vertically spaced from the level of, the stage
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`and viewing areas; and image translating means; the image translating
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`means including a light-transparent, planar element mounted on the
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`stage area and positioned so that a major surface thereof is inclined
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`partly toward the viewing area; the arrangement being such that an
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`image from the generating means is reflected by said surface toward
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`the viewing area but is perceived from the viewing area as if located
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`on the stage area rearwardly of the planar element.” (Emphasis
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`added).
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`These components are shown in FIG. 1:
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`IPR2016-00133
`Patent 5,865,519
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`While St. George’s light-transparent planar element (D) is not necessarily a
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`foil, the Lekowski reference, a Pepper’s Ghost-related prior art patent in the same
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`field as both St. George and the ʼ519 Patent, discloses the claimed foil in the form
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`of a beam-splitter of “thin flexible material or transparent or semi-transparent film
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`such as a MYLAR®.” Ex. 1003 at 2:34‒35.
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`Claim 1 [1.0] Apparatus for representing moving images in the background of a
`stage using:
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`St. George satisfies the preamble with its disclosure of “a theatrical system
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`having a stage area and, adjacent the stage area, a viewing area in which members
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`of an audience can be accommodated for viewing actual images and/or action on
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`the stage area and/or images perceived as being on the stage area....") Ex. 1002 at
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`2:4‒9; see also Fig. 1; 10:18-19 (“members 12 perceive the reflected image from
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`sheet C as if present in region S".”).
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`Dependent claim 4 of St. George recites a horizontal tray above a screen
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`(e.g., screen G (id. at 10:29-11:10 and Fig. 1), which is a reflecting surface)
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`adapted to hold a transparent or translucent fluid, which is for the purpose of
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`creating additional optical effects. To the extent Patent Owner argues that the
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`disclosure of these optical effects elements means that St. George is not capable of
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`accurately “representing” moving images, St. George also discloses and indeed
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`claims an embodiment of the theatrical system that does not use the distorting
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`optical effects. See, e.g., Ex. 1002 at claim 1. Therefore, St. George discloses an
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`embodiment capable of representing undistorted moving images in the background
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`of a stage. See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005)
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`(en banc) (“[T]he presence of a dependent claim that adds a particular limitation
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`gives rise to a presumption that the limitation in question is not present in the
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`independent claim.”).
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`[1.1] an image source;
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`St. George has an image source because it discloses an “image generating
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`means compris[ing] a film image projector, such as a cinematic or slide projector.”
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`Ex. 1002 at claim 2; FIG. 2 element Y; 4:25‒26 (“image generating means
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`comprises a cinematic projector”).
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`[1.2] said stage including a floor, a ceiling disposed vertically above said floor
`and a background disposed therebetween,
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`St. George discloses a stage with a floor, a ceiling disposed vertically above
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`the floor, a background between the two, and walls, ceiling, and a background. See
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`9:17‒18 (“Both areas S (the stage area—see 9:12‒14) and M are enclosed by
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`suitable walls 16, 17 and roofing 18 of an enclosing building.”); 6:5‒8 (“The
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`resultant perceived image thus is seen as if actually present in a rear region of the
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`stage area and thus related to objects or persons on that rear region.”); FIGS. 1, 2.
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`[1.3] said apparatus characterised in that a reflecting surface (18) is arranged on
`said floor (3) of said stage (28) in the central region thereof,
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`[1.3.1] a reflecting surface is arranged on said floor of said stage
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`Although a POSITA would have considered a reflecting surface to be one
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`form of an image translating means, St. George does not expressly disclose a
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`source reflecting surface on the floor of the stage because the reflecting surfaces in
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`St. George are not on the stage’s floor, and the luminous surface that is on the floor
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`is not a reflecting surface, but rather a rear-projection screen. See Ex. 1002 at FIG.
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`1 element G, element O; 11:2‒3 (components Y, O, G are below theatre 10, with
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`screen G horizontal.”).
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`Nevertheless, it would have been obvious to a POSITA at the relevant time
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`t
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