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