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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
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`Petitioner,
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`v.
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`LEGEND3D, INC.,
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`Patent Owner
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`__________________
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`Case IPR2016-01243
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`Patent 7,907,793 B1
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`PATENT OWNER'S AND PETITIONER’S JOINT LIST OF
`PROPOSED MOTIONS
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`In preparation for the January 17, 2017, 12:00 PM Eastern Time
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`Case IPR2016-01243
`Patent 7,907,793 B1
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`initial conference call scheduled in this proceeding, and pursuant to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (August
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`14, 2012), Patent Owner Legend3D, Inc. ("Legend3D") and Petitioner Prime
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`Focus Creative Services Canada Inc. (“Prime Focus”) provide the following
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`list of motions each respective party is currently considering filing. This list
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`is provided without prejudice to either party’s right to seek authorization to
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`file additional motions or to decide not to file motions listed.
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`Motions Proposed by Petitioner Prime Focus
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`I. Motion for Sanctions under 37 C.F.R. § 42.12(b)
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`Per Prime Focus’s email to the Board on January 6, 2016, Prime
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`Focus contends that the Patent Owner has made certain misrepresentations
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`to the Board in its Preliminary Response. Specifically, in light of at least
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`representations made by Patent Owner to the USPTO during the original
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`prosecution of the challenged patent as well as statements made by Patent
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`Owner to the District Court in parallel litigation, Prime Focus contends that
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`Patent Owner has misrepresented the meaning of the term “depth parameter”
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`in order to try to preserve the claim of priority from the challenged ‘793
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`Patent to U.S. Patent Nos. 7,181,081 and 7,333,670.
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`-1-
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`Prime Focus seeks an order that: (a) holds that none of the claims in
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`the challenged ‘793 Patent can claim priority to the ‘081 or ‘670 Patents; and
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`(b) precludes Patent Owner from arguing that any claim related to 2D-to-3D
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`conversion within a continuation or CIP of the challenged ‘793 Patent can
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`claim priority to the ‘081 or ‘670 Patents.
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`Prime Focus has conferred with Patent Owner about this issue but the
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`parties were unable to reach agreement.
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`II. Motion to Submit Supplemental Information
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`Patent Owner objected to Prime Focus’s expert’s declaration as “not
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`under oath or affirmation or penalty of perjury.” Paper 18 at p. 2 (Jan. 5,
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`2017). In response, Prime Focus timely served on Patent Owner
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`supplemental evidence in the form of an additional declaration from Prime
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`Focus’s expert, Dr. Forsyth, to address the alleged deficiency. As Patent
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`Owner’s objection goes to the admissibility of the original declaration,
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`Prime Focus believes that its additional declaration is properly handled as
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`supplemental evidence. However, in an abundance of caution in the event
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`that the Board understands Patent Owner’s objection to operate in a different
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`manner, Petitioner seeks authorization to file the additional declaration as
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`supplemental information.
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`The parties have met and conferred about this issue.
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`-2-
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`Motions Proposed by Patent Owner Legend3D
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`1. Motion to Submit Supplemental Information Pursuant to 37
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`Code of Federal Regulations (“CFR”) § 42.123. Legend3D Requests
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`authorization to file a Motion to Submit Supplemental Information that is
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`relevant to a claim for which the trial has been instituted. Specifically,
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`Legend3D seeks to submit the following supplemental information:
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`(1) Maleficent Up Close Video from Prime Focus’s website;
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`(2) A research paper from December 2005 entitled “Converting 2D to
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`3D: A Survey” by Qingqing Wei, Delf University of Technology, the
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`Netherlands (previously submitted by Patent Owner in IPR2015-01350 as
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`Exhibit 1014);
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`(3) 1995 book entitled “Perception of Space and Motion”, Chapter 3:
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`“Perceiving layout and knowing distances: The integration, relative potency,
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`and contextual use of different information about depth” by Cutting &
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`Vishton; and
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`(4) 1991 section on “How to Reinforce Perception of Depth in Single
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`Two-Dimensional Pictures” by Shojiro Nagata from the book entitled
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`“Pictorial communication in Virtual and Real Environments”.
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`The above Supplemental Information is relevant to a claim for which
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`trial has been instituted per 37 CFR § 42.123(a).
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`2. Contingent Motion to Amend Claims pursuant to CFR §
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`42.121. Legend3D may wish to file a motion to amend claims. Legend3D’s
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`motion to amend would be contingent upon the PTAB’s decision. Legend3D
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`would request that its motion only be considered if the PTAB chooses to
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`invalidate any of the claims in the 7,907,793 B1 Patent.
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`3. Motion for Additional Discovery pursuant to 37 CFR §
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`42.51(b)(2). Legend3D believes additional discovery is warranted in
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`relation to factual assertions advanced by either party in the proceeding.
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`Specifically, Legend3D seeks to depose Richard Baker, an employee of
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`Prime Focus (Sn. Stereo Supervisor), who appears and narrates a portion of
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`the Maleficent Up Close Video (above). Legend3D asserts that this
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`Additional Discovery is warranted because it directly relates to the issues of
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`Saturation and Luminance being used as depth parameters to affect depth,
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`and the Graham secondary consideration of nonobviousness copying factor.
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` 4. Motion for Sanctions for Misrepresentations by Petitioner.
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`Legend3D may seek to file a Motion for Sanctions pursuant to either 37
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`CFR § 42.11 or § 42.12 for certain improper conduct amounting to
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`misrepresentations made by Petitioner to the Board in this proceeding.
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`First, Petitioner’s assertions that counsel for Legend3D has made
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`various unspecified “misrepresentations” for advancing a legal argument is,
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`-4-
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`in reality, a thinly veiled attempt to obtain summary judgment and gain an
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`undue tactical advantage. (See, e.g., Safe-Strap Co., Inc. v. Koala Corp.
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`(S.D. NY 2003) 270 F.Supp.2d 407, 421 [Sanctions motion an inappropriate
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`vehicle to obtain summary judgment in patent case.]; see also Square, Inc. v.
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`Think Computer Corp., Case CBM2014-00159, at 2-3, and fn. 1, (PTAB
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`November 27, 2015) (Paper 48) [factors including Rule 11 standard], 37
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`Code of Federal Regulations § 42.11(d)(4) [sanctions under this section
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`should be consistent with § 42.12]) Second, Legend3D’s position is not
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`“frivolous” and is grounded in fact and law. (Safe-Strap Co., Inc., supra,
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`270 F.Supp.2d 407, 411) Third, the pursuit of an improper sanctions motion
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`(to taint, harass, increase expense, etc.), as here, is itself sanctionable
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`conduct. (Id. at 421)
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`Changes to Scheduling Order
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`Patent Owner Legend3D’s Position
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`Legend3D seeks to move Date 1 from March 16, 2017, to April 6, 2017.
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`The reason for the requested change is that—due to counsel’s schedule on
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`other matters, unavailability due to out of town commitments, and other
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`imminent matters in existence prior to the issuance of the Scheduling
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`Order—counsel requires the additional time to be able to complete the
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`deposition of Prime Focus’s expert and draft the related filings due on Date
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`1. It is noted here for the Board’s convenience that Legend3D also has
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`significant deadlines on March 16, 2017, in IPR2016-00806 and counsel has
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`out of town commitments during the last portion of February and early
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`March 2017 creating challenges in coordinating the depositions.
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`Petitioner Prime Focus’s Position
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`Prime Focus opposes this change to the Scheduling Order that seeks
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`to take 3 weeks out of Prime Focus’s pocket and put them straight into
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`Legend’s pocket. Legend’s justification for its proposal is that it is generally
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`busy and has personal travel plans. But we are all busy and we all have
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`personal commitments. Prime Focus remains committed to working
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`together and would make exceptions in exceptional circumstances, but this is
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`not one of them. Although Due Date 1 should not be pushed back at all, if it
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`is, then Due Date 2 should be pushed back by the same amount so that
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`Legend bears the burden of accommodating its own schedule.
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`-6-
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`Case IPR2016-01243
`Patent 7,907,793 B1
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`By: /Danna J. Cotman/
`Danna J. Cotman, Cal Bar No.: 188245
`ARC IP Law, PC
`7744 Herschel Avenue
`La Jolla, CA 92037
`P. (858) 442-5877
`F. (858) 777-5425
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`Dated: January 12, 2017
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`Respectfully submitted,
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`By: /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
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`
`
`/s/ Joshua Glucoft
`Joshua Glucoft (Reg. No. 67,696)
`Jonathan Kagan (Unopposed Pro Hac Vice motion pending)
` IRELL & MANELLA LLP
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`1800 Avenue of the Stars, Suite 900
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`Los Angeles, CA 90067-4276
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`Telephone: (310) 277-1010
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`Fax: (310) 203-7199
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`Email: PrimeFocusIPR@irell.com
`Attorneys for Petitioner Prime Focus Creative Services Canada Inc.
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`-7-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on
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`January 12, 2017, a copy of the document "PATENT OWNER'S AND
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`PETITIONER’S JOINT LIST OF PROPOSED MOTIONS" was served
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`by electronic mail, as agreed to by the parties, upon the following:
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`Joseph J. Mayo
`joe@arciplaw.com
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`Danna Cotman
`danna@arciplaw.com
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`docketing@arciplaw.com
`Legend3D@arciplaw.com
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`ARC IP Law, PC
`7744 Herschel Avenue
`La Jolla CA 92034
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`
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`/s/Susan M. Langworthy
` Susan M. Langworthy