I PUBLIC VERSION (NONI-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—0O449
`
`Patent 8,924,506
`
`PATENT OWNER BRADIUM TECHNOLOGIES LLC’S
`
`RESPONSE PURSUANT TO 37 C.F.R. §42.120
`
`PROTECTIVE ORDER MATERIAL
`
`

`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... .. 1
`
`II.
`
`Overview of the ’506 Patent .......................................................................... ..7
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art ..................................................... ..9
`
`Claim Construction ............................................................................. ..9
`
`III.
`
`IV.
`
`Legal Standards ........................................................................................... .. 16
`
`The Patentability of Claims 1-21 Should Be Affirmed .............................. .. 18
`
`A.
`
`B.
`
`Summary of Patent OWner’s Argument ............................................ ..l8
`
`Discussion of Reddy and Hombacker ............................................... ..21
`
`1. Reddy ........................................................................................ ..21
`
`2. Hombacker .................................................................................. ..22
`
`C.
`
`The Asserted References Do Not Teach or Suggest All Elements
`of the ’506 Patent .............................................................................. ..23
`
`1. Reddy does not disclose a limited bandwidth communications
`channel ........................................................................................ ..23
`
`2. Reddy does not disclose a limited communication bandwidth
`computer device .......................................................................... ..25
`
`3. Neither Reddy nor Hombacker discloses selection of data parcels
`for progressive resolution enhancement ..................................... ..29
`
`4. Neither Reddy nor Hombacker discloses the ’506 patent’s
`efficient data structure ................................................................. ..32
`
`5. Neither Reddy nor Hornbacker discloses a remote computer
`queuing data parcels based on an importance of the update data
`parcel as determined by the remote computer ............................ ..4l
`
`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 TerraVision 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. Hornbacker and Reddy are incompatible ................................... ..50
`
`4. The reference combination is guided by impermissible hindsight52
`
`E.
`
`Objective Indicia of Non—Obviousness Support a Finding of Non-
`Obviousness ....................................................................................... ..52
`
`1. There was a long-felt need but unresolved need for the invention
`of the ’506 Patent. ....................................................................... ..53
`
`2. Praise for the Invention ............................................................... ..55
`
`3. Commercial Success of the Invention ........................................ ..58
`
`V.
`
`Conclusion ................................................................................................... ..61
`
`

`
`Patent Owner Bradium Technologies LLC (“Patent Owner”) hereby submits
`
`this Patent Owner’s Response to the Petition filed by Microsoft Corporation
`
`(“Petitioner”) in case IPR20l6—00449 for review of claims 1-21 of U.S. Patent
`
`No. 8,924,506 (the “’506 patent”).
`
`I.
`
`INTRODUCTION
`
`The Board instituted inter partes review on one ground: whether claims 1-
`
`21 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 Agouris and of
`
`inventor, Mr. Isaac Levanon. Based on the complete record, the Board should
`
`affirm the patentability of all claims.
`
`Reddy in view of Hornbacker does not teach or suggest all of the elements
`
`of the challenged claims of the ’506 patent, including a limited bandwidth device
`
`or communications channel, processor selection of data parcels to provide for
`
`progressive resolution enhancement, queuing of data parcels on a remote computer
`
`(server) based on importance of the data parcel as determined by the server, and
`
`the ’506 patent’s eff1cientKD, X, Y data structure.
`
`(EX. 2003, 1l46.)
`
`Hornbacker does not disclose all the elements which Reddy is lacking,
`
`including processor selection of data parcels to provide for progressive resolution
`
`enhancement, queuing of data parcels on a server based on importance of the data
`
`

`
`parcel as determined by the server, and the efficient KD, X, Y data structures of
`
`the ’506 patent. EX. 2003, 111146-48.
`
`In any case, a POSA would not have combined Reddy and Hornbacker to
`
`arrive at the claimed invention. Ex. 2003, W48-64. A POSA would not consider a
`
`document-processing reference such as Hornbacker for GIS applications. EX.
`
`2003, 111149, 111—117. Also, in addressing a bandwidth—limited situation, a POSA
`
`would not have looked to Reddy, either alone or in View of Hornbacker, because
`
`Reddy is specifically designed for a high-speed internet connection and is
`
`computationally complex and bandwidth intensive. See EX. 2066, p.2 (proposal to
`
`build application over advanced NGI networks); EX. 2003, 11750-52, 62. Reddy is
`
`part of the Multidimensional Applications GigaBit (extremely high-speed) Internet
`
`Consortium (MAGIC) project. EX. 1004, 1138 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 describiediand claimed in the ’506 patent." Ex. 2003, fl50—52,
`
`74, 123.
`
`A POSA would also not have considered Hornbacker in a bandwidth—limited
`
`environment, especially in the context of a real—time or “fly over” application. EX.
`
`2003, fl53—5 8, 61-62. Hornbacker discloses that the server custom-calculates tile
`
`views of an image. In response to a user request, and based on the particular angle
`
`

`
`of rotation that the user happens to request, for example, tiles with that exact
`
`rotation are created. These custom tiles would not be usable if another user
`
`requests the same image at a slightly different angle. A POSA would understand
`
`this system to be an inefficient approach that would needlessly result in duplicative
`
`network traffic. Ex. 2003, fl53—54, 67, 96, 105.
`
`The Petition’s suggestion to combine Hombacker with Reddy is driven by
`
`improper hindsight. Ex. 2003, 111154, 98, 110-1 19, 124-125, 130—134. A POSA
`
`would not have looked to Reddy in View of Hombacker, 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. Ex. 2003, 1154. By contrast, Hornbacker 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 responseto simple requests from
`
`the client computers. Further, a POSA would have understood that applying the
`
`custom—tile-calculation approach of Hornbacker 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. Id. The approach of
`
`Hornbacker would have been understood to be impractical for the hundreds of
`
`

`
`gigabytes of data of the Reddy environment, especially for the goal of real—time
`
`performance. See EX. 1004, 112; EX. 2003, 1154.
`
`Another reason that a POSA would not have looked to Reddy or Hornbacker
`
`is that the prior art taught away from the innovations of the ’5 06 patent and
`
`towards the use of compression and progressive transmission of image files.
`
`EX. 2003, M5 5-56. The prior art discouraged the use of the ’506 patent’s KD, X, Y
`
`data 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:l8; Ex. 1005 at Appendix N at l. 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 a rapid
`
`initial View by the user of a low-resolution image and also 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.L:T7
`
`2043 at 53:l9—54:3, 70:9—7l:l9; EX. 1005, Appendix BB (Migdal) at Fig. lB—and———
`
`2:29-30, 2:43-45; Ex. 2003, W57»-58.
`
`The invention of the ’ 506 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. 2006,1 p.24 (p.32); Ex. 2003, 115 8. 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, p.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, pp. 19-20 (pp.12l—122). Further, networked Geographical Information
`
`Systems (GIS) were in place as least as of 1991. Ex. 2006, pp.38—39 (pp.57—58.)
`
`Development of “fly over” type systems had taken place since the 1980s. Ex. 2006,
`
`p.83 (p.354). Yet no one came up with the invention of the ’506 patent prior to Mr.
`
`Levanon. Indeed, there were numerous failures. Ex. 2006, p.15 (p.23). Reddy’s
`
`TerraVision 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, 1fll59—60. TerraVision 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.
`
`I
`
`1 Exhibits 2006 and 2007 are portions of a two-volume Geographical Information
`Systems book that Dr. Michalson has relied upon in the past for the proposition
`that GIS have been used since at least the late 1960’s. Exhibit 2043, 1626-21 :22.
`Dr. Michalson keeps several copies of this two-volume set in his personal library,
`and he confirmed much of the information that Patent Owner relies upon in this
`response from the two-volume set at deposition in IPR2015-01432. Exhibit 2043,
`22:5—25:20, 28:2—32:1.
`
`

`
`The need satisfied by the ’506 patent was not met by the prior art. EX. 2003,
`
`M5 8, 135-140. Therefore, the inventor’s company was able to license the
`
`technology of the ’506 patent to several tech companies, inc1uding.1nd
`
`Daewoo, despite focused effort in the GIS field to develop automotive navigation
`
`systems. EX. 2007, pp.l16—l7, 124; Ex. 2004, 111132-33, 42—66, 78-81; Exs. 2029;
`
`2030; 2032—33; 2037; 2051—53; 2056, pp.64—67. Industry members,-
`
`also praised the technology claimed in the ’506 Patent. 2 Ex.
`
`N o o
`
`I“J;
`
`EU?“ N o )—* V10 *3 )—*
`
`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. EX. 2003,
`
`111155-57, l20—l22. The inventor was therefore able to achieve over a million of
`
`dollars in investment and in licensing fees for his very small company. EX. 2004,
`
`11113940.
`
`

`
`The patentability of claims 1-21 of the ’506 patent should be affirmed. The
`
`asserted references do not disclose all of the elements of the claims. A POSA
`
`would not have combined the references to achieve the claims of the ’506 Patent.
`
`And secondary considerations such as licensing revenues show that the patented
`
`technology was non—obvious.
`
`II.
`
`OVERVIEW OF THE ’506 PATENT
`
`The ’506 pat_ent,i_s_directed to optirnally presenting image data on client
`
`systems in a limited—bandwidth environment with potentially limited processing
`
`performance and resources. EX. 1002, e.g., 1:1-3, 1:29-34, 3:12-14, 3:46-49,
`
`8:14-18, 11:60-67. The inventors developed a method for the retrieval of large-
`
`scale images over limited bandwidth network communications channels or usable
`
`by small client devices. See, e.g., EX. 1002 at 3:12-42; 3:50-54; 4:7-16.
`
`A well—recognized problem in the art at the time of the ’ 506 patent was that
`
`full resolution image presentation over a network connection may be subject to
`
`latency. EX. 1002 at 1:52-55; EX- 2003, 1111135439. Prior art techniques to —
`
`address latency in limited—bandwidth situations relied on computa_tion,a1ly-intensive
`
`compression and progressive transmission techniques. See, e.g., EX. 1002 at 1:3 8-
`
`2:41. For example, transmission of differential coefficient sets required the client
`
`to perform an inverse-transform function. See EX. 1002 at 1:66-2:14 (describing
`
`Tzou, U.S. Pat. No 4,698,689); see EX. 2003, W122, 125. A refinement to that
`
`

`
`technique employed a computationally—intensive function to variably build
`
`resolution of the image based on retrieving coefficient sets. See Ex. 1002 at 2:15-
`
`41; EX. 2003, 11125.
`
`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. 1002 at 2:42-45; 2:49-51; 3:13-15; Ex. 2004,
`
`‘M32, 46, 81. Conventional approaches presumed an excess of computing
`
`performance, memory, storage, and relatively high-bandwidth networks. See
`
`Ex. 1002 at 1:47-49; 2:49-51; see Ex. 2003, 11125 (characterizing the approaches
`
`of Yap and Tzou as computationally—intensiVe). A small client at the time of the
`
`invention would be expected to have limited processing capacity and memory. See
`
`Ex. 1002 at 2:47-50; Ex. 2003, fi[40; Ex. 2004, 111132, 46, 81. These small clients
`
`typically operated under wireless conditions with very limited network
`
`bandwidths. Sec Ex. 1002 at 3:13-15; Ex. 2003, 111133, 40-41.
`
`The ’ 506 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 using “efficient data structures”
`
`to store image parcel data. EX. 1002, e. g., 4:1-7; 4:7-16; 4:17-23.
`
`

`
`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, 111116-18. Mr. Levanon, a listed inventor on the
`
`patent, for example, studied industrial engineering but did not complete a degree
`
`and did not have a master’s degree as Petitioner would require. Ex. 2004, 117.
`
`Petitioner Microsoft has not asserted that the other listed inventor, Yoni Lavi, had
`
`education beyond a Bachelor of Science at the time of the invention, and Patent
`
`Owner asserts that Mr. Lavi 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 theWBoard’s construction of the tennW“iData Parcel?
`
`W W
`
`if
`
`as “data that corresponds t_oa_r14ele_r_r1ent of a source image array.” Paper9,_ p. l9.
`
`1
`
`Patent Owner agrees with the Board that the term “mesh” does not need to be
`
`construed beyond its plain and ordinary meaning.
`
`Patent Owner proposes the Board adopt its construction of “Image Parcel”
`
`from IPR20l5—0l432 for the related U.S. Pat. No. 7,139,794, which has a
`
`

`
`substantially identical specification. IPR2015—0l432, 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 and Y position in
`
`the image array coordinates and an image set resolution index. Id.; see Ex. 2003
`
`124.
`
`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, 1Hl27—36.
`
`A POSA would have understood that a “limited bandwidth communications
`
`channel” refers to the communications channel iitself,” not the device receiving the
`
`data parcels. Although the term is not expressly defined in the specificationiof the
`
`’506 patent (Paper 9, pp.22—23), the ’506 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-bandwidth channels by high concurrent user loads.” Ex. 1002 at
`
`10
`
`

`
`3:14-20 (emphasis added). A high—bandwidth channel operating under high
`
`concurrent user load can suffer from limited bandwidth conditions, but a low
`
`bandwidth data @2_1_nn:el relates to the technological constraints on the channel
`
`itself. See EX. 2003, 1131-32.
`
`The specification discloses that the inventors considered narrowband and
`
`wireless communications channels as the limited bandwidth channels. The ’506
`
`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 a narrowband or otherwise limited
`
`bandwidth communications channel to support presentation of high-resolution
`
`images subject to dynamic Viewing frustums.” Ex. 1002 at 1:29-34 (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, 1132.
`
`Wireless networks were the other form of limited bandwidth
`
`communicationschannel.disclosed in the ’506 patent. Forexample, the ’~506~
`
`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. 1002 at 3 : 13—l5 (emphasis
`
`added). Wireless networks are particularly susceptible to packet loss, a latency
`
`11
`
`

`
`problem the ’506 patent seeks to address. See EX. 2003, 1Hl33—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. 1002 at 3:33-37. The ’506 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. 1002 at 8:50-53. Figure 1 of the ’506 patent shows a
`
`preferred embodiment of the invention, including a wireless connection. “The
`
`preferred operational environment 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. l002 at 5:30-36.
`
`Petitioner’s construction of this termrelieseon a flawed reading of the
`
`specification and is overbroad: See EX. 2003, ‘H36. 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 47-48 (Claim 8,
`
`preamble). But the Internet is not a “communications channel” as used in the ’506
`
`patent or as would be understood by a POSA in 1999. See EX. 2003, 1136. A client
`
`12
`
`

`
`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, 1136.
`
`Although the invention of the ’506 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, 1Hl37—43; EX. 1002 at 5:36-40.
`
`Support for this construction is found in the specification, which describes a
`
`number of preferred embodiments of the ’506 patent’s invention, whose goal is to
`
`provide a client system viable on small clients. See, e. g., EX. 1002 at 3:38-42; ——
`
`—
`
`3
`
`Ex. 2003, 1137. “A mobile computingdeviee such as mobile phone, smartphone, —— ~—
`
`and or personal digital assistant (PDA) is a characteristic small client. Embedded,
`
`1ow—cost kiosk and or automobile navigation systems are other typical examples.”
`
`Ex. 1002 at 2:55-60. “Cellular connected PDAS and webphones are examples of
`
`small clients that are frequently constrained by limited bandwidth conditions. The
`
`13
`
`

`
`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. 1002 at 3 220-25. “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, tablets and webphones.” Ex. 1002 at 4:l2~l6. “For small clients 20, the
`
`available memory for the parcel data store 46zis generally quite restricted.
`
`In—order
`
`to make optimal use of the available memory, only currently viewable image
`
`parcels are subject to download.” Ex. 1002 at 8:60-63.
`
`The ’506 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. 1002 at 3:13-20; Ex. 2003, 1141. The ’506 patent
`
`anticipates that even when a small client isusing a relatively high—bandwidth
`
`communications channel, it may besubject toehigh concurrent user *load;~Ex.— 1002
`
`at 3:13-20. Figure 1 of the ’506 patent displays two examples of limited
`
`bandwidth situations for a small client 20: a plug-in local network server 22
`
`implementing a small, embedded web server (Ex. 1002 at 5:42—49) as well as a
`
`wireless connectivity provider 16 (Ex. 1002 at 5:35-36). The ’506 patent also
`
`14
`
`

`
`notes that cellular connected PDAS and webphones are frequently constrained by
`
`limited bandwidth conditions (EX. 1002 at 3:20-22), 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, fl42. Petitioner
`
`claims that “a POSITA 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, 1142. In contrastto Petitioner? se
`
`2
`
`——
`
`——
`
`~
`
`overbroad definition, Patent Owner’s reasonable construction gives meaning to the
`
`term. EX. 2003, 111142-43.
`
`15
`
`

`
`Although the specification notes, for example, that client systems include
`
`conventional workstations and personal computers (Ex. 1002 at 5:36-42), the
`
`claim language itself is more narrow.
`
`III. LEGAL STANDARDS
`
`Petitioner has not met its burden of proving unpatentability by a
`
`preponderance of the 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 7 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). so In addition,
`
`Petitioner must show that a PO SA 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).
`
`16
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`

`
`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
`
`41 8).
`
`Objective indicia are independent evidence of non-obviousness. Ortho-
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`McNez'l Pharms, 520 F.3d at 1365; see also Leo Pharm. v. Rea, 726 F.3d 1346,
`
`1358 (Fed. Cir. 2013). Objective indicia allow the Board “to avert the trap of
`
`hindsigh .” Crocs, Inc. v. [TC, 598 F.3d 1294, 1310 (Fed. Cir. 2010).
`
`Objective indicia “may often be the most probative and cogent evidence of
`
`non-obviousness in the record.” ’IPR2014—00309’at 35, 145-746” (P.T.A.B. Mar. 23:7
`
`2014) (quoting Ortho-McNeil Pharm., 520 F.3d at 1365); see Transocean: v.
`
`F
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`MaerskDrz'llz'ng, 699 F.3d 1340, 1349 (Fed. Cir. 2012)).
`
`17
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`

`
`IV. THE PATENTABILITY OF CLAIMS 1-21 SHOULD BE AFFIRMED
`
`A.
`
`Summary of Patent Owner’s Argument
`
`Reddy fails to disclose, and would not teach or suggest to a POSA, several
`
`elements of the ’506 patent claims, including:
`
`0
`
`“limited bandwidth communications channel” (claims 8—21), “limited
`
`communications bandwidth computer device” (claims 1-7, 10—l2,
`
`and l5—21), “device mobile computer system, a cellular computer
`
`system, an embedded computer system, a handheld computer system,
`
`a personal digital assistants [sic] and an internet—capable digital
`
`phone” (claims 4, 11, and 18);
`
`0
`
`“said processor operative to select said defined data parcel .
`
`.
`
`. to
`
`provide for a progressive resolution enhancement of said defined
`
`image on said display” (claims 8, 15);
`
`0
`
`“queuing the update data parcels on the remote computer based on an
`
`importance of the update data parcel as determined by the remote
`
`computer.” (claims 6, 13, 20); and
`
`,
`
`0
`
`“storing each data parcel on the remote computer in a file of defined
`
`configuration such that a data parcel can be located by Specification of
`
`a K13, X, Y value that represents the data set resolution index D and
`
`18
`
`

`
`corresponding image array coordinate” (claims 7, 14, and 20). EX.
`
`2003, 1146.
`
`Hombacker also does not disclose, and would not teach or suggest to a
`
`POSA, the elements:
`
`0
`
`“said processor operative to select said defined data parcel .
`
`.
`
`. to
`
`provide for a progressive resolution enhancement of said defined W
`
`image on said display” (claims 8, 15);
`
`0
`
`“queuing the update data parcels on the remote computer based on an
`
`importance of the update data parcel as determined by the remote
`
`computer.” (claims 6, 13, 20); and
`
`0
`
`“storing each data parcel on the remote computer in a file 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 image array coordinate” (claim 7, 14, and 20).
`
`EX. 2003, 1147.
`
`Therefore, the combination of Hornbacker With Reddy would not satisfy the
`
`claim language and claims 1-21 should not be found obvious over Reddy in View
`
`of Hombacker. EX. 2003, fll48. Further, Hornbacker would not be combined with
`
`Reddy, for reasons set forth below. EX. 2003, 1Hl49—63.
`
`19
`
`

`
`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,
`
`111151-52, 59, 65, 74. By contrast, for example, the ’506 patent teaches a system
`
`and method in which “Complex graphics and animation abstraction layers are not
`
`required.” Ex. 1002 at 4:30-33.
`
`Further, a PO SA would not combine Hornbacker with Reddy to cure the
`
`0 deficiencies in Reddy for at least two reasons. Ex. 2003, 1163. First, a POSA
`
`would not consider a document-processing reference such as Hornbacker for GIS
`
`applications, because document source material imposes very different technical
`
`constraints than does GIS data. Ex. 2003, M49, 111-117.
`
`Second, the references take starkly different and incompatible technical
`
`approaches. Ex. 2003, ‘M54, 126-29. Reddy is directed to specialized client—based
`
`image viewing software in which tiles are pre-computed and shared among all
`
`clients with the goal of real-time “fly over” system performance. Ex. 2003, 11105.
`
`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, M40, 44; Ex. 2003, 1176. Unlike
`
`Reddy’s specialized client software, Hombacker operates through HTTP requests
`
`from a web browser specifically to avoid the type of specialized client workstation
`
`20
`
`

`
`image View software that is employed in TerraVision II. See EX. 1003 at 2:24-26,
`
`14: 17-28; Ex. 2003, M63, 66, 127. The Hornbacker 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, 1154. View tiles are not generated
`
`in advance because Hornbacker 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. Id., W53, 67,
`
`96, 98, 105. Therefore, Patent Owner respectfully disagrees wit