PUBLIC VERSION (NON-CONFIDENTIAL)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner
`
`CASE IPR2016-00448
`Patent 7,908,343
`
`PATENT OWNER BRADIUM TECHNOLOGIES LLC'S
`RESPONSE PURSUANT TO 37 C.F.R. §42.120
`
`PROTECTIVE ORDER MATERIAL
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Overview of the '343 Patent ............................................................................ 6
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art ....................................................... 8
`
`Claim Construction ............................................................................... 8
`
`III. Legal Standards ............................................................................................. 15
`
`IV. The Patentability of Claims 1-20 Should Be Affirmed ................................ 17
`
`A.
`
`B.
`
`Summary of Patent Owner's Argument.. ............................................ l7
`
`Discussion of Reddy and Hombacker. ................................................ l9
`
`1. Reddy ............................................................................................ 19
`
`2. Hombacker .................................................................................... 20
`
`C.
`
`The Asserted References Do Not Teach or Suggest All Elements
`of the '343 Patent ................................................................................ 21
`
`1. Reddy does not disclose a limited bandwidth communications
`channel .......................................................................................... 21
`
`2. Reddy does not disclose a limited communication bandwidth
`computer device ........................................................................... .23
`
`3. Neither Reddy nor Hombacker discloses selection of data parcels
`for progressive resolution enhancement ....................................... 26
`
`4. Neither Reddy nor Hombacker discloses prioritization of
`requests for image parcels, including based on difference in
`resolution ....................................................................................... 28
`
`5. Neither Reddy nor Hombacker discloses the use of a
`"prioritization value" .................................................................... 32
`
`6. Neither Reddy nor Hombacker discloses the '343 patent's
`efficient data structure ................................................................... 35
`
`I
`
`

`
`D.
`
`A POSA Would Not Have Selected and Combined Reddy and
`Hombacker, and the Asserted Combination Is Driven by Improper
`Hindsight ............................................................................................ .44
`
`1. The prior art taught away from an image pyramid approach such
`as Terra Vision II for real-time image display over the World
`Wide Web .................................................................................... .45
`
`2. Reddy teaches away from operation on a limited
`communications bandwidth computer device ............................. .47
`
`3. Hombacker and Reddy are incompatible .................................... .49
`
`4. The reference combination is guided by impermissible hindsight51
`
`E.
`
`Objective Indicia of Non-Obviousness Support a Finding ofNon-
`Obviousness ......................................................................................... 52
`
`1. There was a long-felt need but unresolved need for the invention
`of the '343 Patent. ......................................................................... 52
`
`2. Praise for the Invention ................................................................. 55
`
`3. Commercial Success ofthe Invention .......................................... 57
`
`V.
`
`Conclusion ..................................................................................................... 60
`
`11
`
`

`
`Patent Owner Bradium Technologies LLC ("Patent Owner") hereby submits
`
`this Patent Owner's Response to the Petition filed by Microsoft Corporation
`
`("Petitioner") in case IPR2016-00448 for review of claims 1-20 of U.S. Patent
`
`No. 7,908,343 (the "'343 patent").
`
`I.
`
`INTRODUCTION
`
`The Board instituted inter partes review on one ground: whether claims 1-
`
`20 are patentable over Reddy in view of Hornbacker. But the Board did not have
`
`the benefit of a full record, including the declarations of Dr. Peggy Ago uris and of
`
`inventor, Mr. Isaac Levanon. Based on the complete record, the Board should
`
`affmn the patentability of all claims.
`
`Reddy in view ofHornbacker does not teach or suggest all of the elements
`
`ofthe challenged claims of the '343 patent, including a limited bandwidth device
`
`or communications channel, the '343 patent's efficient KD, X, Y data structure,
`
`prioritization of data parcels, or a prioritization value associated with an update
`
`data parcel request Hornbacker does not disclose all the elements which Reddy is
`
`lacking, including the efficient KD, X, Y data structures of the '343 patent,
`
`prioritization of data parcels and a prioritization value parameter. Ex. 2003, ~~46-
`
`48.
`
`1
`
`

`
`In any case, a POSA would not have combined Reddy and Hornbacker to
`
`arrive at the claimed invention. A POSA would not consider a document(cid:173)
`
`processing reference such as Hornbacker for GIS applications. Ex. 2003, ~~50,
`
`127-132. Also, in addressing a bandwidth-limited situation, a POSA would not
`
`have looked to Reddy, either alone or in view ofHornbacker, because Reddy is
`
`specifically designed for a high-speed internet connection and is computationally
`
`complex and bandwidth intensive. See Ex. 2066 at 2 (proposal to build application
`
`over advanced NGI networks); Ex. 2003, ~~51-52. Reddy is part of the
`
`Multidimensional Applications GigaBit (extremely high-speed) Internet
`
`Consortium (MAGIC) project. Ex. 1004, ~38 and p.37 (Acknowledgements,
`
`showing funding by MAGIC II). A POSA would not have considered Reddy for a
`
`limited bandwidth environment and would not have applied Reddy to achieve the
`
`method and system described and claimed in the '343 patent. Ex. 2003, ~53.
`
`A POSA would also not have considered Hornbacker in a bandwidth-limited
`
`environment. Hornbacker discloses that the server custom-calculates tile views of
`
`an image based, for example, on a particular angle of rotation that the user happens
`
`to request-these tiles would be unusable in the system ofHombacker by a user
`
`who requests the same image at a slightly different angle, for example, which a
`
`POSA would understand to be an inefficient approach that would needlessly result
`
`in duplicative network traffic. Ex. 2003, ~54.
`
`2
`
`

`
`The Petition's suggestion to combine Hombacker with Reddy is driven by
`
`improper hindsight. Ex. 2003, ,-rss. A POSA would not have looked to Reddy in
`
`view ofHombacker, because these two references take entirely different
`
`approaches. Reddy describes the use of custom software (a specialized version of
`
`VRML that runs as a processing-intensive client application) on the user computer
`
`to achieve real-time "fly over" effect in a complex 3D environment. By contrast,
`
`Hombacker is designed to avoid the need for custom software by allowing users to
`
`access an image via off-the-shelf computer browsers and workstations, by placing
`
`the burden on the server to custom-calculate tiled views of an image file in
`
`response to simple requests from the client computers. Further, a POSA would
`
`have understood that applying the custom-tile-calculation approach ofHombacker
`
`to Reddy would severely slow down the system by imposing an excessive
`
`calculation burden, directly contrary to the goal of Reddy of allowing the user to
`
`"fly over" terrain. Further, the approach of Hombacker would have been
`
`understood to be impractical for the hundreds of gigabytes of data of the Reddy
`
`environment. See Ex. 1004, ,-r2; Ex. 2003, ,-rss.
`
`Another reason that a POSA would not have looked to Reddy or Hombacker
`
`is that the prior art taught away from the innovations of the '343 patent and
`
`towards the use of compression and progressive transmission of image files. Ex.
`
`2003, ,-rs6. The prior art discouraged the use of the '343 patent's KD, X, Y data
`
`3
`
`

`
`structure in limited-bandwidth situations where speed of performance was an issue
`
`because that data structure required redundant transmission of image information.
`
`See Ex. 2043 at 49:9-53 :18; Ex. 1005 at Appendix Nat 1. The prior art instead
`
`directed the POSA to the use of compression techniques such as progressive
`
`transmission, a technique that was praised as allowing for rapid viewing by the
`
`user of a low-resolution image and efficient and smooth improvement of image
`
`resolution over time, in contrast to the perceived higher memory usage,
`
`redundancy, and "popping" caused by sudden changes in using an image tiles that
`
`required a "brand new" image for each resolution level. See Ex. 2043 at 53:19-
`
`54:3, 70:9-71:19; Ex. 1005 at Appendix BB (Migdal) at Fig. 1B and 2:29-30,
`
`2:43-45; Ex. 2003, ~~57-58.
`
`The invention of the '343 patent satisfied a long-felt but unresolved need for
`
`fast and efficient transfer of image data (such as map data) in limited bandwidth
`
`situations. Ex. 2006 at 24 (p.32); Ex. 2003, ~59. There was a documented need
`
`for better solutions for image transfer for mapping and image systems since the
`
`1970's and 1980's. Ex. 2006 at 24 (p.32). It was well known since at least 1991
`
`that map data was large and the speed of access to such data was important. Ex.
`
`2007 at 19-20 (pp.121-122). Further, networked GIS were in place as least as of
`
`1991. Ex. 2006 at 38-39 (pp.57-58.) Development of"fly over" type systems had
`
`taken place since the 1980s. Ex. 2006 at 83 (p.354). Yet no one came up with the
`
`4
`
`

`
`invention ofthe '343 patent prior to Mr. Levanon. Indeed, there were numerous
`
`failures. Ex. 2006 at 15 (p.23). Reddy's Terra Vision II, advocated by Microsoft as
`
`prior art, is in fact another example of a failed attempt to implement an efficient
`
`and fast GIS system that apparently did not work under real-world conditions
`
`outside of a special ultrafast Gigabit-speed network. Ex. 2003, ~~60-61.
`
`Terra Vision II was released for free in its entirety in 2002 under an open source
`
`license, Ex. 2058, but downloaded fewer than 11,000 times in the last fourteen
`
`years. Ex. 2057.
`
`The need satisfied by the '343 patent was not met by the prior art. Therefore,
`
`the inventor's company was able to license the technology of the '343 patent to
`
`several tech companies, including-and Daewoo, despite focused effort in the
`
`GIS field to develop automotive navigation systems. Ex. 2007, p.116-17, 124; Ex.
`
`2004,~~32-33,42-66, 78-81;Exs.2029,2030,2032-33,2037,2051-53,2056,
`
`pp.64-67. Industry
`
`also praised the
`
`technology claimed in the '343 Patent. Ex. 2004, ~~36-37 (industry awards), Exs.
`
`2021 at 2, 2063 at 2; Ex. 2013,
`
`Ex. 2012, p.l.
`
`5
`
`

`
`The asserted prior art does not disclose all elements of the claims, and a
`
`POSA would not have combined the art to achieve the claimed invention. In fact,
`
`the prior art taught away from the innovations of the claimed invention. The
`
`inventor was therefore able to over a million of dollars in investment and in
`
`licensing fees for his very small company. Ex. 2004, ~~ 39-40. The patentability
`
`of claims 1-20 of the '343 patent should therefore be affirmed.
`
`II. OVERVIEW OF THE '343 PATENT
`
`The '343 patent is directed to optimally presenting image data on client
`
`systems in a limited-bandwidth environment with potentially limited processing
`
`performance and resources. Ex. 1001 at, e.g., 1:1-3, 1:25-30,3:7-16,3:40-43,
`
`7:28-32, 11:7-14. The inventors developed a method for the retrieval of large(cid:173)
`
`scale images over limited bandwidth network communications channels or usable
`
`by small client devices. See, e.g., Ex. 1001, 3:7-36; 3:44-48; 4:1-9.
`
`A well-recognized problem in the art at the time of the '343 patent was that
`
`full resolution image presentation over a network connection may be subject to
`
`latency. Ex. 1001, 1:48-51; Ex. 2003 at ~154. Prior art techniques to address
`
`latency in limited-bandwidth situations relied on computationally-intensive
`
`compression and progressive transmission techniques. See, e.g., Ex. 1001, 1:34--
`
`2:37. For example, transmission of differential coefficient sets required the client
`
`to perform an inverse-transform function. See Ex. 1001, 1:62-2:10 (describing
`
`6
`
`

`
`Tzou, U.S. Pat. No 4,698,689); see Ex. 2003, ~137. A refinement to that technique
`
`employed a computationally-intensive function to variably build resolution of the
`
`image based on retrieving coefficient sets. See Ex. 1001, 2:11-37; see Ex. 2003,
`
`With known techniques, significant problems remained in permitting the
`
`effective use of complex images by, for example, small clients with limited
`
`computing capabilities. See Ex. 1001, 2:38--41; 2:45--47; 3:7-9; Ex. 2004, ~~32,
`
`46, 81. Conventional approaches presumed an excess of computing performljllce,
`
`memory, storage, and relatively high-bandwidth networks. See Ex. 1001, 1:43--45;
`
`2:45--47; Ex. 2003, ~140. A small client at the time ofthe invention would be
`
`expected to have limited processing capacity and memory. See Ex. 1001, 2:47-50;
`
`Ex. 2003, ~40; Ex. 2004, ~~32, 46, 81. These small clients typically operated
`
`under wireless conditions with very limited network bandwidths. See Ex. 1001,
`
`3 :7-9; Ex. 2003 at ~~40-41.
`
`The '343 patent overcame limitations of the prior art in providing for large
`
`image retrieval under limited processing, storage, and bandwidth conditions
`
`through a number of novel techniques, including: "the prioritization of image
`
`parcel requests [] based on an adaptable parameter that minimizes the
`
`computational complexity of determining request prioritization"; using "efficient
`
`7
`
`

`
`data structures" to store image parcel data; and the "re-prioritization of image
`
`parcel data requests and presentation." Ex. 1001 at, e.g., 3:62-67; 4:1-9; 4:10-17.
`
`A.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (or "POSA") in 1999 would have had at
`
`least a Bachelor of Science or equivalent degree in electrical engineering or
`
`computer science. Ex. 2003 at ~~17-18. Mr. Levanon, a listed inventor on the
`
`patent, for example, has a four-year Bachelor of Science degree, not a master's
`
`degree as Petitioner would require. Ex. 2004, ~7. Petitioner Microsoft has not
`
`asserted that the other listed inventor, Y oni Lavi, had education beyond a Bachelor
`
`of Science at the time of the invention, and Patent Owner asserts that Mr. La vi was
`
`still a student in 1999 and had, at most, the level of education proposed by Patent
`
`Owner for a POSA.
`
`B.
`
`Claim Construction
`
`Patent Owner proposes construction of certain claim terms below pursuant
`
`to the broadest reasonable interpretation (BRI) for the sole purpose of this inter
`
`partes review proceeding.
`
`Patent Owner agrees with the Board's construction of the term "Data Parcel"
`
`as "data that corresponds to an element of a source image array." Paper 9 at 11.
`
`Patent Owner agrees with the Board that the term "mesh" does not need to be
`
`construed beyond its plain and ordinary meaning.
`
`8
`
`

`
`Patent Owner proposes the Board adopt its construction of "Image Parcel"
`
`from IPR2015--01432 for the related U.S. Pat. No. 7,139,794, which has a
`
`substantially identical specification. IPR2015--01432, Paper 15, p.10 (P.T.A.B.
`
`Dec. 23, 2015). The Board therein construed "Image Parcel" to be an element of
`
`an image array, with the image parcel being specified by the X andY position in
`
`the image array coordinates and an image set resolution index. Id
`
`Additionally, Patent Owner proposes constructions for the following terms:
`
`"limited communication bandwidth computer device" (claims 1, 3, 10, and 12);
`
`and "limited bandwidth communications channel" (claim 13). These terms are
`
`distinct and use different language.
`
`"Limited Bandwidth Communications Channel": The term "limited
`
`bandwidth communications channel" would be construed by a POSA at the time of
`
`the invention, in light of the patent specification, to mean "a wireless or
`
`narrowband communications channel." See Ex. 2003, '1['1[27-36.
`
`A POSA would have understood that a "limited bandwidth communications
`
`channel" refers to the the communications channel itself, not the device receiving
`
`the data parcels. Although the term is not defined in the specification of the '343
`
`patent (Paper 9 at p.23), the '343 patent states that "limited bandwidth conditions
`
`may exist due to either the direct technological constraints dictated by the use of a
`
`low bandwidth data channel or indirect constraints imposed on relatively high-
`
`9
`
`

`
`bandwidth channels by high concurrent user loads." Ex. 1001, 3:9-14 (emphasis
`
`added). A high-bandwidth channel operating under high concurrent user load can
`
`suffer from limited bandwidth conditions, but a low bandwidth data channel relates
`
`to the technological constraints on the channel itself See Ex. 2003, '\)'\)30-31.
`
`The specification discloses that the inventors considered narrowband and
`
`wireless communications channels as the limited bandwidth channels. The '343
`
`patent states, for example, that "[t]he disclosure is related to network based, image
`
`distribution systems and, in particular, to a system and methods for efficiently
`
`selecting and distributing image parcels through narrowband or otherwise limited
`
`bandwidth communications channel to support presentation of high-resolution
`
`images subject to dynamic viewing frustums." Ex. 1001, 1:25-30 (emphasis
`
`added). As would be known to a POSA, narrowband channels generally include
`
`non-broadband communications channels, such as wired dial-up connection, which
`
`was a common consumer-level communications channel in 1999. Ex. 2003, '\)32.
`
`Wireless networks were the other form of limited bandwidth
`
`communications channel disclosed in the '343 patent. For example, the '343
`
`patent specification notes: "Another problem is that small clients are generally
`
`constrained to generally to [sic] very limited network bandwidths, particularly
`
`when operating under wireless conditions." Ex. 1001, 3:6-9 (emphasis added).
`
`Wireless networks are particularly susceptible to packet loss, a latency problem the
`
`10
`
`

`
`'343 patent seeks to address. See Ex. 2003, ~~33-34. Reliable transport protocols
`
`merely mask packet losses--the aggregate bandwidth of the connection is reduced
`
`and the client system can stall waiting for further image data to process. Ex. 1001,
`
`3:27-31. The '343 patent also contemplates performance on wireless devices in
`
`describing its preferred embodiment of four concurrent threads. "Empirically, for
`
`many wireless devices, four concurrent threads are able to support a relatively
`
`continuous delivery of image data parcels to the client 20 for display processing."
`
`Ex. 1001, 7:64-67. Figure 1 of the '343 patent shows a preferred embodiment of
`
`the invention, including a wireless connection. "The preferred operational
`
`enviromnent 10 of the present invention is generally shown in FIG. 1. A network
`
`server system 12, operating as a data store and server of image data, is responsive
`
`to requests received through a communications network, such as the Internet 14
`
`generally and various tiers of internet service providers (ISPs) including a wireless
`
`connectivity provider 16." Ex. 1001, 5:24-30.
`
`Petitioner's construction of this term relies on a flawed reading of the
`
`specification and is overbroad. See Ex. 2003, ~~35-36. The Petition argues that
`
`Reddy teaches a device that retrieves data over limited bandwidth communications
`
`channel because Reddy uses the Internet. See Paper 1 (Petition) at 48-49 (Claim
`
`13, preamble). But the Internet is not a "communications channel" as used in the
`
`'343 patent or as would be understood by a POSA in 1999. See Ex. 2003, ~36. A
`
`11
`
`

`
`client device would use a communications channel to use the Internet. Further, as
`
`explained above, constraints imposed by high concurrent user loads create limited
`
`bandwidth conditions, not limited bandwidth channels. See Ex. 2003, "IJ36.
`
`Although the invention of the '343 patent may work on faster
`
`communications channels (e.g., broadband), the patent claims are limited to
`
`operation over a narrowband or wireless channel.
`
`"Limited Communication Bandwidth Computer Device": The term
`
`"limited communication bandwidth computer device" would be construed by a
`
`POSA at the time of the invention, in light of the patent specification, to mean "a
`
`small client, for example, smaller, typically dedicated function devices often linked
`
`through wireless network connections, such as PDAs, smartphones, and
`
`automobile navigation systems." See Ex. 2003, "1!"1!37-43; Ex. 1001, 5:31-34.
`
`Support for this construction is found in the specification, which describes a
`
`number of preferred embodiments of the '343 patent's invention, whose goal is to
`
`provide a client system viable on small clients. See, e.g., Ex. 1001, 3:32-36; Ex.
`
`2003, "IJ38. "A mobile computing device such as mobile phone, smart phone, and
`
`or personal digital assistant (PDA) is a characteristic small client. Embedded, low(cid:173)
`
`cost kiosk and or automobile navigation systems are other typical examples." Ex.
`
`1001, 2:51-55. "Cellular connected PDAs and webphones are examples of small
`
`clients that are frequently constrained by limited bandwidth conditions. The
`
`12
`
`

`
`conventionally realizable maximum network transmission bandwidth for such
`
`small devices may range from below one kilobit per second to several tens of
`
`kilobits per second" Ex. 1001, 3:14~19. "The client software system is very small
`
`and easily downloaded to conventional computer systems or embedded in
`
`conventional dedicated function devices, including portable devices, such as PDAs
`
`and webphones." Ex. 1001, 4:6~9. "For small clients 20, the available memory
`
`for the parcel data store 46 is generally quite restricted. In order to make optimal
`
`use of the available memory, only currently viewable image parcels are subject to
`
`download." Ex. 1001, 8:7~10.
`
`The '343 patent states that a small client is generally constrained to very
`
`limited network bandwidths either through direct technological constraints (a
`
`limited bandwidth communications channel as explained above) or through
`
`indirect constraints imposed on relatively high-bandwidth channels by high
`
`concurrent user loads. Ex. 1001, 3:7~14; Ex. 2003, ~41. The '343 patent
`
`anticipates that even when a small client is using a relatively high-bandwidth
`
`communications channel, it may be subject to high concurrent user load. Ex. 1001,
`
`3:7~14. Figure 1 of the '343 patent displays two examples oflimited bandwidth
`
`situations for a small client 20: a plug-in local network server 22 implementing a
`
`small, embedded web server (Ex. 1001, 5:36-43) as well as a wireless connectivity
`
`provider16 (Ex. 1001, 5:29~30). The '343 patent also notes that cellular
`
`13
`
`

`
`connected PDAs and webphones are frequently constrained by limited bandwidth
`
`conditions (Ex. 1001, 3:14-16), both by their limited bandwidth channel (cellular)
`
`and by high concurrent user load (cellular towers potentially servicing multiple
`
`users).
`
`The Petition's construction of "limited bandwidth communications device"
`
`is unreasonably broad, even under the BRI standard. Ex. 2003, ~42. Petitioner
`
`claims that "a POSIT A would have understood that both the Internet and WWW
`
`are computer network technologies in which multiple users share bandwidth
`
`somewhere in the network, and therefore, Reddy's terrain data viewing also works
`
`when a user has limited bandwidth available due to other users' bandwidth
`
`utilization." Paper 1, p.27. Petitioner's interpretation effectively writes the
`
`"limited bandwidth" language out of the claims, as any computer device that
`
`connects to the Internet would qualifY as a "limited communications bandwidth
`
`computer device." A POSA would not have understood limited communications
`
`bandwidth computer device, in light of the patent specification, to mean "any
`
`device connected to the Internet." Ex. 2003, ~42. In contrast to Petitioner's
`
`overbroad definition, Patent Owner's reasonable construction gives meaning to the
`
`term.
`
`14
`
`

`
`Although the specification notes, for example, that client systems include
`
`conventional workstations and personal computers (Ex. 1001, 5:30-36), the claim
`
`language itself is more narrow.
`
`III. LEGAL STANDARDS
`
`Petitioner has not met its burden of proving unpatentability by a
`
`preponderance ofthe evidence. See 35 U.S.C. §316(e).
`
`Most inventions rely on known building blocks, so it is important to identifY
`
`a reason that would have prompted a POSA to combine the prior art elements in
`
`the way claimed in the challenged patent. KSR Int'l Co. v. Teleflex Inc., 550 U.S.
`
`398, 418-19 (2007). "Obviousness requires more than a mere showing that the
`
`prior art includes separate references covering each separate limitation in a claim
`
`under examination." Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
`
`(Fed. Cir. 2011) (citing KSR, 550 U.S.at 418). Petitioner must show that a POSA
`
`would both select and combine the building blocks "in the normal course of
`
`research and development to yield the claimed invention." Unigene Labs., 655
`
`F.3d at 1360 (citing KSR, 550 U.S. at 421) (emphasis added). In addition,
`
`Petitioner must show that a POSA would have been motivated to combine the
`
`teaching of the prior art references to achieve the invention. Proctor & Gamble
`
`Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009).
`
`15
`
`

`
`Hindsight analysis is inappropriate; obviousness must be measured "at the
`
`time the invention was made." Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d
`
`1358, 1364 (Fed. Cir. 2008) (emphasis in original). The Petitioner must not use
`
`the patent as a roadmap. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
`
`(citing Grain Processing v. American-Maize Prods, 840 F.2d 902, 907 (Fed. Cir.
`
`1988)); see also KSR, 550 U.S. at 421. A reason for combining disparate prior art
`
`references is critical and should be made explicit. InTouch Tech., Inc. v. VGo
`
`Communs, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014)(citing KSR, 550 U.S. at
`
`418).
`
`Objective indicia are independent evidence of non-obviousness. Ortho(cid:173)
`
`McNeil Pharms., 520 F.3d at 1365; see also Leo Pharm. v. Rea, 726 F.3d 1346,
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`1358 (Fed. Cir. 2013). Objective indicia allow the Board "to avert the trap of
`
`hindsight." Crocs, Inc. v. fTC, 598 F.3d 1294, 1310 (Fed. Cir. 2010).
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`Objective indicia "may often be the most probative and cogent evidence of
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`non-obviousness in the record." IPR2014-00309 at 35, 45-46 (P.T.A.B. Mar. 23,
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`2014) (quoting Ortho-McNeil Pharm., 520 F.3d at 1365); see Transocean. v.
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`Maersk Drilling, 699 F.3d 1340, 1349 (Fed. Cir. 2012)).
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`16
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`

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`IV. THE PATENTABILITY OF CLAIMS 1-20 SHOULD BE AFFIRMED
`
`A.
`
`Summary of Patent Owner's Argument
`
`Reddy fails to disclose several elements of the '343 patent claims, including:
`
`"limited bandwidth communications channel" (claims 13-20), "limited
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`communications bandwidth computer device" (all claims), "device mobile
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`computer system, a cellular computer system, an embedded computer system, a
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`handheld computer system, a personal digital assistants [sic] and an internet(cid:173)
`
`capable digital phone" (claim 3), "associating a prioritization value to said request .
`
`. . wherein issuing said request is responsive to said prioritization value for issuing
`
`said request in a predefined prioritization order" (claims 10 and 11 ), and "storing
`
`each data parcel on the remote computer in a file of defmed configuration such that
`
`a data parcel can be located by specification of a KD, X, Y value that represents the
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`data set resolution index D and corresponding image array coordinate" (all claims).
`
`Ex. 2003, -,]46.
`
`Hombacker also does not disclose the elements "associating a prioritization
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`value to said request ... wherein issuing said request is responsive to said
`
`prioritization value for issuing said request in a predefined prioritization order"
`
`(claims 10 and 11) and "storing each data parcel on the remote computer in a file
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`of defined configuration such that a data parcel can be located by specification of a
`
`KD, X, Y value that represents the data set resolution index D and corresponding
`
`17
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`

`
`image array coordinate" (all claims). Ex. 2003, ~47. Therefore, the combination
`
`of Hornbacker with Reddy would not satisfY the claim language and claims 1-20
`
`should not be found obvious over Reddy in view ofHornbacker. Ex. 2003, ~48.
`
`Further would not be combined with Reddy, for reasons set forth below. Ex. 2003,
`
`~~49-63.
`
`A POSA would not select Reddy when considering a bandwidth-limited
`
`situation, because it is directed to a high bandwidth communications channel and a
`
`device requiring extensive software to be loaded onto the user computer for
`
`conventional, fixed site workstations to view complex, 3D VRML data. Ex. 2003,
`
`~62. By contrast, for example, the '343 patent teaches a system and method in
`
`which "Complex graphics and animation abstraction layers are not required." Ex.
`
`1001,4:25-26.
`
`Further, a POSA would not combine Hornbacker with Reddy to cure the
`
`deficiencies in Reddy for at least two reasons. First, a POSA would not consider a
`
`document-processing reference such as Hornbacker for GIS applications, because
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`document source material imposes very different technical constraints than does
`
`GIS data. Ex. 2003, ~~127-32.
`
`Second, the references take starkly different and incompatible technical
`
`approaches. Ex. 2003, ~~55, 142-45. Reddy is directed to specialized client-based
`
`image viewing software in which tiles are pre-computed and shared among all
`
`18
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`

`
`clients with the goal of real-time "fly over" system performance. Ex. 2003, ~55.
`
`Thus, a set of low-resolution view tiles can reside in memory of the client and be
`
`used by the client when needed. Ex. 1004, ~,]40, 44; Ex. 2003, ~77. Unlike
`
`Reddy's specialized client software, Hombacker operates through HTTP requests
`
`from a web browser specifically to avoid the type of specialized client workstation
`
`image view software that is employed in Terra Vision II. See Ex. 1003, 2:24-26,
`
`14:17-28. The Hombacker server creates tiles on demand in response to each user
`
`request, a computationally-intensive and inefficient process that a POSA would
`
`understand does not make sense in the context of a goal of a real-time, "fly over"
`
`system. Ex. 2003, ~55. View tiles are not generated in advance because
`
`Hombacker creates custom tiles based on specific requests for a particular view
`
`(e.g., at the rotation angle and scale requested), which cannot be used by another
`
`client who requests a slightly different angle or scale. !d., ~54. Therefore, Patent
`
`Owner respectfully disagrees with the assertion cited by the Board (Paper 9, p.22)
`
`that Reddy and Hombacker take similar approaches.
`
`Finally, secondary considerations point to a conclusion of non-obviousness.
`
`B.
`
`Discussion of Reddy and Horn backer
`
`1.
`
`Reddy
`
`Reddy is directed to a specialized client workstation image viewing software
`
`operating on conventional, fixed site computer system over a high bandwidth
`
`19
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`

`
`internet connection. Ex. 2003, ~~63, 64, 75. Funded by the DARPA
`
`Multidimensional Applications Gigabit Internet Consortium II contract (Ex. 1004
`
`at 37 (Acknowledgements)), Reddy describes client-side VRML browser
`
`Terra Vision II as well as a system of generating VRML terrain files from
`
`geographic data (see generally Ex. 1004). Ex. 2003, ~~52, 60, 75. Terra Vision II
`
`is a real-time, distributed terrain visualization system that was designed to enable
`
`interactive visualization of massive terrain databases that can be distributed over a
`
`high-speed wide-area network. Ex. 1004, ~3 8. Terra Vision relies on a complex,
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`interlaced hierarchy of tree files that include a hierarchy of Geotiles that further
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`contain links to terrain tile files, as well as satellite, aerial, and map imagery and
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`features. Ex. 1004, p.33. Terra Vision II can be implemented on graphics
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`workstations connected to gigabit-per-second ATM networks with high-speed disk
`
`servers as well as desktop PCs connec