IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
`U.S. Patent No. 7,907,793
`Issued: March 15, 2011
`Application No.: 12/542,498
`Filing Date: 8/17/2009
`Priority Date: 5/4/2001
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`For: IMAGE SEQUENCE DEPTH ENHANCEMENT SYSTEM AND
`METHOD
`Filed via Patent Trial Appeal Board End-to-End (PTAB-E2E) system
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`Prime Focus Creative Services Canada Inc.,
`Petitioner
`v.
`Legend3D, Inc.,
`Patent Owner
`_____________
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`Case IPR2016-01243
`_____________
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`PATENT OWNER LEGEND3D, INC.’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(c)
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`In re Inter Partes Review of:
`U.S. Patent No. 7,907,793
`Issued: March 15, 2011
`Application No.: 12/542,498
`Filing Date: 8/17/2009
`Priority Date: 5/4/2001
`
`For: IMAGE SEQUENCE DEPTH ENHANCEMENT SYSTEM AND
`METHOD
`Filed via Patent Trial Appeal Board End-to-End (PTAB-E2E) system
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`Prime Focus Creative Services Canada Inc.,
`Petitioner
`v.
`Legend3D, Inc.,
`Patent Owner
`_____________
`
`Case IPR2016-01243
`_____________
`
`
`PATENT OWNER LEGEND3D, INC.’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(c)
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`TABLE OF CONTENTS
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`STATEMENT OF PRECISE RELIEF REQUESTED ............................. 1
`I.
`II. LEGAL STANDARDS ................................................................................. 1
`III. BASIS FOR RELIEF REQUESTED .......................................................... 2
`A. PETITIONER’S EXPERT DID NOT SIGN HIS DECL. UNDER PENALTY OF PERJURY,
`SO THE DECL. IS NOT EVIDENCE ....................................................................... 2
`B. THE PTAB INSTITUTED BASED ON AN INCORRECT VERSION OF THE
`PETITIONER’S CONSTRUCTION OF DEPTH PARAMETER ...................................... 3
`C. THE DECISION OVERLOOKS INHERENCY COMPLIANCE FOR “DEPTH PARAMETER”
`AS CONSTRUED BY THE PETITIONER .................................................................... 4
`D. THE PTAB ITSELF MAKES A LACK OF WRITTEN DESCRIPTION ASSERTION ON
`BEHALF OF THE PETITIONER, WHICH IS NOT ALLOWED ..................................... 6
`E. THE PTAB USES PETITIONER’S ASSERTION OF LACK OF EXPLICIT DISCLOSURE
`OF “DEPTH” FOR LACK OF INHERENCY WHICH IS LEGAL ERROR ...................... 10
`F. THE PTAB SUPPLIED AN ARGUMENT FOR LACK OF INHERENCY WHEN THE
`PETITIONER DID NOT, WHICH IS NOT ALLOWED .............................................. 13
`G. THE PTAB HAS FURTHER AIDED PETITIONER BY IGNORING PETITIONER’S
`COMPLETE DISAVOWAL OF WHAT A POSITA IS. ............................................ 13
`IV. CONCLUSION ................................................................................................. 15
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Pursuant to 37 Code of Federal Regulations (“CFR”) § 42.71(c), Patent
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`Owner Legend3D, Inc., (“Patentee”), hereby submits the following Request for
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`Rehearing in response to the Decision for Institution of Inter Partes Review of U.S.
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`Patent No. 7,907,793 (the “ ‘793 Patent”).
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`The Board ordered review based on all grounds of unpatentability of claims
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`1-20 of the ‘793 Patent. Patentee requests reconsideration of the Decision to
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`Institute on claims 1-20, at least because (1) the Decision is based on an unsworn
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`and unsigned expert declaration that is not evidence, (2) relies on an incorrect
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`version of a critical claim term that is not in accordance with Petitioner’s definition,
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`(3) overlooks
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`inherency compliance, even using Petitioner’s own claim
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`construction, and (4) is based incorrectly on a lack of written description argument
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`as well as lack of inherency argument, both created by the PTAB on behalf of
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`Petitioner. Patentee requests that the Decision to institute be vacated.
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`II.
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`LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” (37 CFR §
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`42.71 (d)). “When rehearing a decision on petition, the panel will review the
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`decision for an abuse of discretion.” (37 CFR § 42.7 1(c)) “An abuse of discretion
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`occurs where the decision (1) is clearly unreasonable, arbitrary, or fanciful [“R1”];
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`(2) is based on an erroneous conclusion of law [“R2”]; (3) rests on clearly
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`erroneous fact findings [“R3”]; or (4) involves a record that contains no evidence
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`on which the Board could rationally base its decision. [“R4”]” (Stevens v. Tamai
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`(Fed. Cir. 2004) 366 F.3d 1325, 1329, quoting Eli Lilly & Co. v. Bd. of Regents of
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`the Univ. of Wash. (Fed. Cir. 2003) 334 F.3d 1264, 1266-67) (R1-R4 added.1)
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`III. BASIS FOR RELIEF REQUESTED
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`The PTAB asserts that Petitioner relies on the ‘081 and ‘067 patents as
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`teaching or suggesting every limitation of claims 1, 13 and 20 except “depth
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`parameter” (Decision, pp. 6-7). Thus, the entire institution decision boils down to
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`whether Patentee’s own ‘081 and ‘670 patents inherently support a claim of
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`priority for “depth parameter” from the ‘793 Patent.
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`Petitioner’s Expert did not sign his Decl. under penalty of
`A.
`perjury, so the Decl. is not evidence
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`The Decision is based on material that is not evidence in the case as
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`Petitioner’s purported expert declaration of David Forsyth is not under oath or
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`affirmation or penalty of perjury as required by law. (Federal Rules of Evidence
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`Rule 603; 28 United States Code § 1746; and 37 CFR §§ 1.68, 42.2, 42.53(a),
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`42.63(a), Coalition for Affordable Drugs IX, LLC v. Bristol-Myers Squibb
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` All emphasizing herein is added unless otherwise noted.
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Company, Case No. IPR01723, at p. 6, fn. 5, (PTAB February 22, 2016) (Paper
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`10)) The supposed declaration is also unsigned and unsubscribed. (Ibid.) The
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`aforesaid “declaration” is therefore not evidence. (See, e.g., Gemtron Corp. v.
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`Saint-Gobain Corp. (Fed. Cir. 2009) 572 F.3d 1371, 1380 [unsworn attorney
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`argument is not evidence]) The Decision to institute should accordingly be vacated
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`based on lack of evidence (R4).
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`The PTAB instituted based on an incorrect version of the
`B.
`Petitioner’s construction of depth parameter
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`The Decision is based on an incorrect version of Petitioner’s construction of
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`depth parameter. Although the Decision quotes Petitioner’s construction properly
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`(at p. 8, first full paragraph), the PTAB then proceeds to base its decision on a
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`faulty construction thereof (at p. 9, first full paragraph):
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`… Dr. Forsyth attests that “depth parameter” relates to the distance of an
`object from a camera, … On the record … not entitled to a priority date …
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`The PTAB relied on “…‘depth parameter’ relates to the distance of an object from
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`a camera”, yet Petitioner’s construction is “relates to the perceived distance of an
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`object from the camera” (Pet., p. 10:5-8 [emphasis added]).
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`This distinction is critical since Patentee has provided extensive arguments
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`that the color parameters taught in the ‘081 Patent (Hue, Saturation, Luminance)
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`may be used as depth parameters (Saturation, Luminance) that alter the perceived
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`distance of an object from the camera (Response pp. 2-15), even if there is no
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`literal setting of an actual “distance” value, i.e., having a unit of length
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`measurement, as the PTAB incorrectly seems to imply depth parameter requires in
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`the parent patents. To be sure, Patentee’s Preliminary Response (“Response”)
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`shows extensively how Saturation and Luminance values are used to alter the
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`perceived distance, e.g., without setting a unit of length measurement (see the next
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`section for Response support for perceived distance) as the above quote seems to
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`imply. The PTAB cannot arbitrarily alter the Petitioner’s asserted meaning of a
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`claim term, and institution should respectfully be vacated based on arbitrariness
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`(R1) and lack of evidence (R4).
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`The Decision overlooks inherency compliance for “depth
`C.
`parameter” as construed by the Petitioner
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`The Decision overlooks that even when using Petitioner’s claim construction
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`for depth parameter as proffered—which “relates to the perceived distance of an
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`object from the camera”—all of the images shown in the Response have perceived
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`distances to an object from the camera, i.e., “appear…at depth” at the viewpoint
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`at which the picture is viewed. The Response shows extensive support for using
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`Saturation and Luminance to alter the perceived distance. The sphere in the
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`Response, p. 4, shows varying perceived distances within it. See Response, p. 4:
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`An artist modifies the luminance (brightness) across the flat circle, setting
`the luminance with an HSL color editor (middle figure), … a change to a
`color parameter (luminance) results in a depth effect: the flat disc now
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`appears to be a 3D sphere with depth that varies within the object.
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`In addition, as described and shown in the Response, at pp. 33-34:
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`By setting the saturation and luminance depth parameters for the sky and
`two peaks in the background to apply haze, some of the peaks are made to
`appear further away in the background, i.e., at a different depth in
`keeping with the depth cue “Aerial Perspective”.
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`Thus, setting Saturation and Luminance parameters make objects appear at
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`different depths, and hence alter their perceived distance, such that the PTAB
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`overlooked that the Response shows that Saturation and Luminance “relates to the
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`perceived distance of an object from the camera” which may be used to alter the
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`perceived depth. The PTAB may have overlooked that depth is perceived in all
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`filmmaking and as such it is an inherent component of all images such as those
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`that are processed by the ‘793 Patent. Response, p. 11:
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`Lipton, Ex. 2009, in the book titled “Foundations of the Stereoscopic
`Cinema – A Study in Depth”, … All filmmaking is three-dimensional in the
`sense that motion pictures provide many cues to depth that also help us
`perceive the visual world. Certainly planar films depict a three-
`dimensional world, and observers rarely feel that anything is missing.
`Space, as it is depicted, seems full, and the images appear to be real and
`lifelike. (Ex. 2009, Chapter 2, p. 53, 2nd Paragraph)
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`Since Saturation and Luminance meet the claim construction proffered by
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Petitioner for depth parameter, i.e., “relates to the perceived distance of an object
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`from the camera”, the ‘081 and ‘067 Patents provide support for “depth parameter”
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`as outlined above and institution should be vacated for erroneous fact finding (R3).
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`The PTAB itself makes a lack of written description assertion on
`D.
`behalf of the Petitioner, which is not allowed
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`The Decision acknowledges Patentee’s assertion that Saturation and
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`Luminance may be used to achieve depth effects using an HSL color space model,
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`which the Response shows affects perceived depth as per the previous section, so
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`institution should have been denied. However, the PTAB itself asserts that support
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`for setting these in the ‘081 and ’670 Patents is somehow inadequate, i.e., is
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`limited to a “single reference” in the Decision, p. 10:
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`Patent Owner relies on a single reference in each of the ’081 and ’670 patents
`to “an HSL color space model.” Prelim. Resp. 3. Although Patent Owner
`adduces instances in the art of using saturation and luminance to achieve
`depth effects, we are not persuaded on this evidentiary record that a person of
`ordinary skill would have understood this single HSL reference together with
`the claims of the ’081 and ’670 patents as fully setting forth the inventions
`of the Challenged Claims, particularly with regard to a “depth parameter.”
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`Preliminarily, this statement regarding the ‘081 and ‘067 Patents’ claims is
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`unfounded. The Decision, respectfully, does not point out with particularity how
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`any of the 17 claims in the ‘081 and ‘670 Patents that include the terms Saturation
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`or Luminance do not “relate to perceived depth …” and Petitioner never made this
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`argument, so there is no basis for this assertion. (To the contrary, see, for example,
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`Ex. 1003, ‘081 Patent claims 7, 8, 30-32, 38-40, and Ex. 1004, ‘670 Patent claims
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`8, 10-13, 15, 21-22, 24, 28, for instances of “Saturation” and “Luminance”. In fact,
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`the Response (p. 18) stated, “In other words, based on the specifications, saturation
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`and luminance are expressly a part of color (HSL) as disclosed by the
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`specifications”, and hence the “single reference to HSL” is mistaken in that the
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`‘081 and ‘670 Patents disclose Saturation and Luminance a combined total of 114
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`times in the specifications and claims, which the Decision is silent on when
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`making the previous statement.).
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`Next, since Petitioner did not address inherency related to Saturation and
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`Luminance of HSL, Patentee only provided a single reference and there was no
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`reason to provide further written disclosure for inherency as it is the Petitioner’s
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`job to prove there is no explicit and no inherent support for priority, which
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`Petitioner did not even address (see next section). The Petitioner always bears the
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`burden of proof and this applies even at the institution stage. (In Re Magnum Oil
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`Tool Int’l, Ltd. (Fed. Cir. 2016) 829 F.3d 1364, 1375; see also In re Klesper
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`(CCPA 1968) 397 F.2d 882, 885, and section E below). Petitioner did not even
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`look for Saturation or Luminance as potential inherent teachings for “perceived
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`distance” and did not assert any lack of written description deficit for inherency,
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`since Petitioner only looked for explicit literal occurrence of the word “depth” (see
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Section E). In particular, the Decision admits that Petitioner only shows a lack of
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`explicit support at p. 9:
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`… Here, due to the absence of explicit disclosure of “depth parameter” in
`the ’081 and ’670 patents, we turn to the understanding of the ’081
`and ’670 patents by one of ordinary skill in the art at time. …
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`As the Federal Circuit has just recently reiterated, however, the doctrine
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`of inherent disclosure renders certain undisclosed yet inherent properties an
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`adequate written description to support a subsequent patent application that
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`explicitly recites inherent properties. (Yeda Research & Dev. Co. v. Abbott
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`GMBH & Co. KG (Fed. Cir. 2016) 837 F.3d 1341, 1345) If even
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`“undisclosed yet inherent properties” are sufficient for § 112 purposes, then a
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`fortiari disclosed inherent properties (like the “SL” of “HSL” as a depth
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`parameter) must also suffice.
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`Furthermore, since adequacy of written description is determined by a
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`POSITA, and since Patentee provided a showing sufficient for the POSITA as
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`defined by Petitioner stating “Ultimately…the challenged ‘793 Patent is so obvious
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`that it does not matter what level of ordinary skill in the art is applicable”, then
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`Patentee certainly made a good enough showing according to Petitioner (see
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`section G below). The Decision fails to explain how Patentee’s inherency showing
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`was not good enough based on Petitioner’s own POSITA definition.
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`The conclusion of inadequate support for inherency based on a showing of
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`no explicit support that the Decision used to negate inherency, especially given that
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`Petitioner never made a lack of inherency showing, is a new attack on the ‘793
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`Patent that Petitioner did not make, which is respectfully not allowed. (See
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`Magnum, supra, 829 F.3d 1364, 1380-1381, and section E below).
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`The Decision (p. 9) dubiously states that Patentee is trying to support written
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`description for “depth parameter” with the single occurrence of HSL color space.
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`To be clear, a parent patent is not required to include even a single mention of a
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`term to enable a child patent to properly claim priority to that term via inherency
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`to the parent as shown in Acme Highway Prod. Co. v. D.S. Brown Co. (6th Cir.
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`1970) 431 F.2d 1074, 1080. In addition, inherency, by definition, typically requires
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`extrinsic knowledge as understood by a POSITA (ibid.), and Patentee provided
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`extensive extrinsic evidence in the Response pp. 5-15, citing Exs. 2005-2010
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`(which includes Petitioner’s own ‘628 patent that teaches depth, “perceived
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`distance…” being derived from haze, shadow, and lighting as the Response points
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`out at p. 5) that the PTAB may have overlooked. Use of extrinsic evidence to fill in
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`information a patent is silent about is perfectly acceptable. (See, e.g., Continental
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`Can Co., U.S.A. v. Monsanto Co. (Fed.Cir.1991) 948 F.2d 1264, 1268) So, for
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`example, and in addition to Acme, in Kennecott Corp. v. Kyocera International,
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`Inc., (1987) 835 F.2d 1419 the parent patent only disclosed a “sintered ceramic
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`body” but a CIP added a showing of “equiaxed microstructure” that was
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`considered inherent in the parent and entitled to the benefit of the parent’s filing
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`date. Institution should be vacated based on clearly erroneous fact finding (R3).
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`The PTAB uses Petitioner’s assertion of lack of explicit disclosure
`E.
`of “depth” for lack of inherency which is legal error
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`The Decision is based on a finding that no inherency exists using only a
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`conclusory (and inadmissible per section A) expert opinion directed at explicit
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`support for the literal term “depth” and not on a search for “depth parameter” as
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`asserted by the Decision (p. 9, citing Pet. 10-11) whereas the Petition at that
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`location actually states (p. 10:5-8 [bold added]):
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`Given this complete lack of disclosure of depth anywhere in the family
`history and the material difference between “color” parameters and “depth”
`parameters, a person of ordinary skill in the art could not possibly have
`recognized that the inventor of the ‘081 Patent or ‘670 Patent had
`possession of the depth-related invention of the ‘793 Patent when those
`earlier patents were filed. See Ex. 1009, Dr. Forsyth Decl. at ¶¶ 40-41.
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`The Decision instituted based on lack of inherency by relying on an expert
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`opinion regarding explicit teaching of “depth” and this is respectfully legal error
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`(under R2 and R4) as the expert is answering the wrong question, and the Decision
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`uses the answer to the wrong question to provide an inherency argument for the
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`Petitioner. Specifically, the Decision (at p. 9) admits that the expert’s opinion is
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`directed to a search for explicit disclosure of the key word “depth” that the
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Decision erroneously cites as “depth parameter” that, again, relates not to actual
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`“depth” but “perceived distance”:
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`The written description requirement is satisfied by disclosure of “such
`descriptive means as words, structures, figures, diagrams, formulas, etc., that
`fully set forth the claimed invention.” Lockwood v. Am. Airlines, Inc., 107
`F.3d 1565, 1572 (Fed. Cir. 1997). Here, due to the absence of explicit
`disclosure of “depth parameter” in the ’081 and ’670 patents, we turn to the
`understanding of the ’081 and ’670 patents by one of ordinary skill in the art
`at time. Hyatt, 146 F.3d at 1353. Petitioner proffers the declaration of Dr.
`Forsyth in support of its contention that a person of ordinary skill would not
`have understood the specifications of the ’081 and ’670 patents to describe
`use of a “depth parameter.” Pet. 10–11 (citing Ex. 1009 ¶¶ 39–41). As
`discussed above, Dr. Forsyth attests that “depth parameter” relates to the
`distance [Incorrect - should be perceived distance - see section B above]
`of an object from a camera, a concept that does not appear to have been
`described in either the ’081 or ’670 patents, but is described in the ’793
`patent at issue. See Ex. 1015, 4, 13 (indicating new matter added). …
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`After the Decision admits that the expert did not find any explicit disclosure,
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`the Decision itself proffers the same expert conclusion of no explicit disclosure of
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`“depth” (not “depth parameter” as asserted in the Decision) to find no inherency of
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`“depth” parameter (i.e., “relates to perceived distance…”) on behalf of the
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`Petitioner. This finding in the Decision is respectfully fundamentally flawed. An
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`argument that something is not explicitly found cannot be used to say it is also not
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`implicitly or inherently found. By definition, something that is inherent is not
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`explicit.
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` The expert never opined on inherency, and yet the Decision
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`impermissibly used the expert’s (inadmissible) opinion on explicit disclosure to
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`plug the hole of a nonexistent argument from Petitioner regarding inherency,
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`which is respectfully not allowed. (Magnum, supra, 829 F.3d 1364, 1380-1381)
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`Also, the Patentee’s showing of inherency in the Response, pp. 16-17, may have
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`been overlooked:
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`Also, matter added that is deemed inherent in the original application is
`not “new matter” and is entitled to the filing date of the parent patent.
`(Kennecott Corp. v. Kyocera International, Inc. (Fed. Cir. 1987) 835 F.2d
`1419, 1422-1423; In re Lange (C.C.P.A. 1981) 644 F.2d 856, 863-864;
`see also Locklin v. Switzer Bros. (9th Cir. 1961) 299 F.2d 160, 167)
`Here, since the ‘793 Parent Patents enable use of the HSL color space, a
`person of ordinary skill in the art will recognize that depth parameters,
`such as saturation and luminance, is not “new matter” in the ‘793 Patent.
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`Since Petitioner did not make an inherency argument, Patentee’s showing of
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`inherency, which Petitioner’s expert failed to even look for, as acknowledged by
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`the Decision, should have resulted in a denial of institution, especially in view of
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`the POSITA level proffered by Petitioner (see Section G). The Petitioner could
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`then reconsider their case and/or file a Petition that addresses inherency as the
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`Petitioner always bears the burden of proof (ante).
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`The PTAB supplied an argument for lack of inherency when the
`F.
`Petitioner did not, which is not allowed
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`In view of the previous sections, the PTAB itself made the argument for
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`lack of inherency that the Petitioner did not make. The PTAB respectfully
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`cannot do so, i.e., it cannot raise, address, and decide patentability theories never
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`presented by the Petitioner, and is barred from arguing on behalf of the Petitioner.
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`(Magnum, supra, 829 F.3d 1364, 1380-1381) Here, the Decision conjures a lack
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`of inherency argument not even supplied by the Petitioner, notwithstanding that
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`Petitioner’s own ‘628 Patent teaches that depth (which Petitioner asserts “relates to
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`the perceived distance of an object from the camera”) is related to haze, shadow,
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`and lighting as Patentee points out in the Response, at p. 5 (1st para). Petitioner
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`makes no inherency argument, and providing one to Petitioner, even though it is
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`incorrect for using the lack of explicit disclosure for lack of inherency (see
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`previous section), is unsupported factual and legal error. Thus, respectfully,
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`institution should be vacated (R2, R3, and R4).
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`The PTAB has further aided Petitioner by ignoring Petitioner’s
`G.
`complete disavowal of what a POSITA is.
`The Decision is based on Petitioner’s definition of POSITA that does not
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`eliminate anyone including Patentee or its asserted POSITA (Response, p. 28).
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`Ultimately, however, the challenged ‘793 Patent is so obvious that it
`does not matter what level of ordinary skill in the art is applicable.
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
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`Petitioner has disavowed what a POSITA is, which is critical for
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`determining inherency as a POSITA must do so. (Hyatt v. Boone (Fed. Cir. 1998)
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`146 F.3d 1348, 1353) As Hyatt expressly recognizes, “minutiae of descriptions or
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`procedures perfectly obvious to one of ordinary skill in the art yet unfamiliar to
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`laymen need not be set forth.” (Ibid.) Petitioner’s POSITA standard effectively
`
`conflates a person of ordinary skill in the art with a lay person and thus even a lay
`
`person would understand that “color” as used in the parent patents includes the
`
`HSL color space model consisting of “Hue, Saturation, and Luminance” as
`
`affecting depth perception or anything that “relates to the perceived distance of an
`
`object from the camera”.
`
`Although the Decision gives full weight to the expert’s unsworn and
`
`unsigned declaration, which contains no analysis of inherency, the Decision
`
`simultaneously gives no weight to Patentee’s POSITA positions. Again, the PTAB
`
`is respectfully not allowed to plug these holes in the Petition. (Magnum, supra,
`
`829 F.3d 1364, 1380-1381) Under Petitioner’s POSITA definition, Patentee’s
`
`POSITA position should have controlled for inherency over the experts unsworn
`
`declaration that only looks for explicit support for “depth” without even using that
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`expert’s own construction of “depth parameter,” viz., “relates to the perceived
`
`distance of an object from the camera”. Consequently, institution should be
`
`vacated for clearly erroneous fact finding (R3).
`
`
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`14
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
`
`
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`IV. Conclusion
`
`
`For the aforesaid reasons, the Decision is based on an unsworn and unsigned
`
`expert declaration that is not evidence; relies on an incorrect version of a critical
`
`claim term made up by the PTAB and not in accordance with Petitioner’s
`
`definition; overlooks inherency compliance, even using Petitioner’s own claim
`
`construction; is based incorrectly on a lack of written description argument created
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`by the PTAB on behalf of Petitioner; uses the Petitioner’s lack of explicit
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`disclosure for “depth” to assert a lack of inherency for the same term, which is
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`impossible; is based on a lack of inherency argument created by the PTAB on
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`behalf of Petitioner; and is based on the PTAB ignoring Petitioner’s POSITA
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`definition that should have enabled Patentee’s assertions on inherency to prevail.
`
`It was Petitioner’s job to advance arguments for itself as the burden of proof is
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`always upon Petitioner to prove its case and it did not regarding anything inherent
`
`in the parent patents for a “depth parameter” that “relates to the perceived distance
`
`of an object from the camera”. Patentee requests that the institution decision be
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`vacated as set forth above.
`
`Dated: January 3, 2017,
` Respectfully submitted,
` /Joseph J. Mayo/
` Joseph J. Mayo, Reg. No.: 53288
` ARC IP Law, PC, 7744 Herschel Avenue, La Jolla, CA 92037
` P. (858) 442-5877, F. (858) 777-5425
` Counsel for Patent Owner Legend3D, Inc.
`
`
`
`15
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`
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`Patent Owner Request for Rehearing for Inter Partes Review of USPN 7,907,793
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 Code of Federal Regulations § 42.6, the undersigned certifies
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`that on January 3, 2017, a copy of the foregoing document was served via
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`Electronic Mail on counsel of record identified below as agreed upon by the
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`parties, and that this document was filed with the Patent Trial and Appeal Board
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`via the PTAB End-to-End System.
`
`IRELL & MANELLA LLP
`Joshua Glucoft, Esq.
`Jonathan S. Kagan, Esq.
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`JGlucoft@irell.com
`PrimeFocusIPR@irell.com
`
`
`
`
`
`/Marie L. Acosta/
`
`- 1 -
`
`IPR2016-01243
`Patent No. 7,907,793
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