`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
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`
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`Prime Focus Creative Services Canada Inc.,
`
`Petitioner
`
`v.
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`Legend3D, Inc.,
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`Patent Owner
`
`___________
`
`IPR2016-01243
`U.S. Patent No. 7,907,793
`___________
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`
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`PETITIONER’S REQUEST FOR REHEARING
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`BACKGROUND .......................................................................................... 1
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`THE BOARD’S LATE CHALLENGE TO COMBINABILITY
`WAS IMPROPER. ....................................................................................... 3
`
`A.
`
`B.
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`The Board does not have authority to raise, address, and
`decide patentability theories not presented in an IPR. ....................... 3
`
`The Board’s new theory of patentability in the Final Written
`Decision improperly deprived Petitioner of its right to
`respond pursuant to the APA and Due Process. ................................. 4
`
`C.
`
`Petitioner was unjustly prejudiced. .................................................... 7
`
`III. THE BOARD MISAPPREHENDED THE SULLIVAN
`COMBINATION AND OVERLOOKED KEY ARGUMENTS
`AND EVIDENCE ......................................................................................... 8
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`Sullivan teaches masks and is therefore combinable for the
`same reasons as Passmore. ................................................................. 8
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`Combining Sullivan requires the same simple substitution as
`combining Passmore. ....................................................................... 13
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`A.
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`B.
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) ...................................................................... 5
`
`EmeraChem Holdings, LLC v. Volkswagen Group of America,
`Inc.,
`859 F.3d 1341 (Fed. Cir. 2017) ...................................................................... 7
`
`In re Magnum Oil Tools International, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...................................................................... 4
`
`In re NuVasive, Inc.,
`841 F.3d 966 (Fed. Cir. 2016) ........................................................................ 5
`
`Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG,
`856 F.3d 1019 (Fed. Cir. 2017) ...................................................................... 6
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ...................................................................... 5
`
`Statutes
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`5 U.S.C. § 500 ...................................................................................................... 5
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`5 U.S.C. § 554 ...................................................................................................... 5
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`5 U.S.C. § 556 ...................................................................................................... 5
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`Other Authorities
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`37 C.F.R. § 41.50(b) ............................................................................................ 4
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`37 C.F.R. § 42.23(b) ............................................................................................ 7
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`37 C.F.R. § 42.71(d) ............................................................................................ 5
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`I.
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`BACKGROUND
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`On pages 16 through 18, the Petition argued reasons that a person of
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`ordinary skill would have to combine the prior art ‘081 and/or ‘670 Patents with
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`prior art Sullivan and also separately with prior art Passmore. These reasons were
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`supported by evidence within the prior art and also the expert testimony of Dr.
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`David Forsyth. Paper 1 at p. 16-18; Ex. 1009 ¶¶ 45-46, 48-49.
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`In its Preliminary Response, Patent Owner did not challenge the proffered
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`reasons to combine or evidence in support thereof. Rather, Patent Owner argued
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`only that the reasons to combine were moot because they relied on references that
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`Patent Owner asserted were not prior art. Paper 12 at p. 27.
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`The Board instituted IPR on multiple grounds that combined Sullivan with
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`the ‘081 Patent and/or ‘670 Patent. Paper 14 at p. 16. After noting the Petition’s
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`arguments regarding reasons to combine and Patent Owner’s non-response to these
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`reasons, the Institution Decision held that there was a reasonable likelihood that the
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`challenged claims were obvious over the Sullivan combinations. Id. at p. 11-14.
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`In its Response, Patent Owner never disputed the reasons to combine or
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`evidence in support thereof. See Paper 36. Nor did the Patent Owner’s expert
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`dispute the reasons to combine. See Exs. 2024 and 1040. The only new evidence
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`on the issue was introduced when Patent Owner asked Petitioner’s expert, Dr.
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`Forsyth, a handful of questions related to reasons to combine, and Dr. Forsyth
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`responded with answers that were fully supported by evidence in the record. See
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`Ex. 2018 at 24:10-34:22. In short, Patent Owner never introduced any evidence or
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`argument disputing the combinability of Sullivan or Dr. Forsyth’s conclusions.
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`At the oral hearing, the Board did not ask any questions regarding reasons to
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`combine, nor did Petitioner present any argument specifically directed to reasons
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`to combine. See Paper 53. Patent Owner did not appear at the oral hearing and
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`therefore did not make any argument regarding reasons to combine. Id. at p. 2.
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`Thus, by the end of the trial on the merits, no evidence in the record disputed Dr.
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`Forsyth’s findings regarding the combinability of Sullivan, and neither Patent
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`Owner nor the Board had never disputed the combinability of Sullivan.
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`In its Final Written Decision, the Board held that the Petition established
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`sufficient reasons to combine Passmore with the ‘081 and/or ‘670 Patents,
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`especially since Patent Owner did “not address Petitioner’s arguments or evidence
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`regarding…rationale for the combination.” See Paper 54 at p. 28-29. However,
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`the Board held that Petitioner had not carried its burden regarding reasons to
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`combine Sullivan, even though the reasons to combine Sullivan relied on
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`uncontroverted evidence. See id. at p. 42-45. The Board based its holding
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`regarding the Sullivan combination in part on testimonial evidence that had never
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`been cited or discussed by anyone. Id. at 44 (citing Ex. 2021 at 31:12-15).
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`II. THE BOARD’S LATE CHALLENGE TO COMBINABILITY WAS
`IMPROPER.
`A. The Board does not have authority to raise, address, and decide
`patentability theories not presented in an IPR.
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`As discussed above, Patent Owner never challenged the evidence or
`
`arguments underlying the Petition’s reasons to combine Sullivan with the ‘081
`
`and/or ‘670 Patents. Nonetheless, the Board raised, addressed, and decided its own
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`theory of combinability for the first time in its Final Written Decision.
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`Specifically, even though Patent Owner never disputed or even addressed whether
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`Sullivan teaches masks, the Board erroneously found that “Sullivan does not
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`describe masks,” and the Board reached that erroneous conclusion in part by
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`relying on evidence that was never cited by anyone. See Paper 54 at p. 44 (citing
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`Ex. 2021 at 31:12-15). Based on its new, incorrect theory that Sullivan did not
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`teach masks, the Board held in its Final Written Decision that there was
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`insufficient reason to combine Sullivan. Paper 54 at p. 43-45. It was improper for
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`the Board to adopt this new theory for the first time in its Final Written Decision:
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`[W]e find no support for the PTO’s position that the Board is
`free to adopt arguments on behalf of petitioners that could
`have been, but were not, raised by the petitioner during an
`IPR. Instead, the Board must base its decision on arguments
`that were advanced by a party, and to which the opposing
`party was given a chance to respond. [The PTO’s] authority
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`is not so broad that it allows the PTO to raise, address, and
`decide unpatentability theories never presented….
`In re Magnum Oil Tools International, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
`
`
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`In the patent prosecution context, there is a rule that provides the Board with
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`authority to raise new grounds not otherwise at issue. See 37 C.F.R. § 41.50(b).
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`Under that rule, the Board is authorized to raise new theories of unpatentability
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`only if the Board provides an opportunity for the party to respond to the new
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`theory. Id. However, there is no corresponding statute or rule for IPR proceedings
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`that allows the Board to raise, address, and decide new patentability theories for
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`the first time in a Final Written Decision. The Board was therefore not allowed to
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`raise, address, and decide its new theory regarding masks and the combinability of
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`Sullivan for the first time in its Final Written Decision.1
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`B.
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`The Board’s new theory of patentability in the Final Written
`Decision improperly deprived Petitioner of its right to respond
`pursuant to the APA and Due Process.
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`Even if the Board can sua sponte raise, address, and decide new theories of
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`patentability, the Board cannot raise those new theories for the first time in its
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`Final Written Decision without giving Petitioner sufficient notice and a chance to
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`1 The Board is also barred from raising, addressing, and deciding its new theory
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`regarding masks and the Sullivan combination by non-statutory constraints,
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`including waiver, forfeiture, and estoppel.
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`fully respond, including further development of the evidentiary record.2 See In re
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`NuVasive, Inc., 841 F.3d 966, 972, 975 (Fed. Cir. 2016) (remanding for a “a full
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`opportunity to submit additional evidence and arguments” when the Board’s Final
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`Written Decision relied on previously uncited portions of prior art as “an essential
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`part of its obviousness findings”); Dell Inc. v. Acceleron, LLC, 818 F.3d 1293,
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`1301 (Fed. Cir. 2016) (remanding for further proceedings where the Board relied
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`on a “key factual assertion” made for the first time during the oral hearing); see
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`also 5 U.S.C. §§ 500 et seq., particularly § 554 (requiring notice of “the matters of
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`fact and law asserted”) and § 556 (“A party is entitled to present his case or
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`defense by oral or documentary evidence [and] to submit rebuttal evidence”).
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`Petitioner is entitled to an opportunity to fully respond, including the
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`submission of new evidence, because the Board changed its theory on the
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`combinability of Sullivan between the Institution Decision and Final Written
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`Decision without any notice from the Board or challenge by the Patent Owner.
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`The Board’s midstream change of theory on combinability in this case is similar to
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`that discussed in SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1350-52
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`(Fed. Cir. 2016), where the Board had adopted a claim construction in its Final
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`2 A request for rehearing is not an adequate opportunity to respond because a
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`request for rehearing is restricted to arguments previously presented in a party’s
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`briefing and cannot introduce new evidence. See 37 C.F.R. § 42.71(d)).
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`Written Decision that was different than the construction the Board had adopted in
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`its Institution Decision and that was not advocated by either party during trial. The
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`Federal Circuit remanded for further proceedings under the Board’s late-adopted
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`construction because the Board “may not change theories in midstream without
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`giving respondents reasonable notice of the change and the opportunity to
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`present argument under the new theory.” Id. (quoting another source). In this
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`case, the Board’s Institution Decision summarily adopted the Petition’s
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`combinability argument and held that there was a reasonable likelihood of
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`invalidating the challenged claims (Paper 14 at p. 11-14), but then the Board
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`suddenly decided in its Final Written Decision that there was not sufficient reason
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`to combine, even though neither Patent Owner nor the Board had ever cast any
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`doubt on the issue and even though there was no evidence in the record disputing
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`Dr. Forsyth’s conclusion regarding the combination.
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`The obligation to provide Petitioner with notice and an opportunity to fully
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`respond to new theories raised by the Board is especially critical here because the
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`Board relied on previously uncited evidence in support of its new theory. See
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`Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1029 (Fed.
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`Cir. 2017) (“The Board’s procedural obligations are not satisfied merely because a
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`particular fact might be found somewhere amidst the evidence submitted by the
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`parties, without attention being called to it so as to provide adequate notice and
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`an adequate opportunity to be heard.”); EmeraChem Holdings, LLC v.
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`Volkswagen Group of America, Inc., 859 F.3d 1341, 1351-52 (Fed. Cir. 2017)
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`(remanding to the Board for further proceedings because “The fact that neither
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`party ever mentioned [certain evidence] helps make the point that neither party was
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`on notice that [the evidence] was at issue”); Paper 54 at p. 44 (relying on uncited
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`evidence Ex. 2021 at 31:12-15).
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`The fact that Petitioner was provided the opportunity to submit Reply
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`briefing is immaterial. A petitioner’s reply “may only respond to arguments raised
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`in the corresponding…patent owner response” (37 C.F.R. § 42.23(b)), and since
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`Patent Owner in this case never disputed the reasons to combine Sullivan nor the
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`relationship between Sullivan and masks, Petitioner was precluded by rule from
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`addressing in its Reply the Board’s unknown doubts about the Sullivan
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`combination. Petitioner must be afforded the opportunity to present argument and
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`new evidence in response to the Board’s new theory of combinability.
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`C.
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`Petitioner was unjustly prejudiced.
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`Patent Owner never offered evidence or argument disputing the Petition’s
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`reasons to combine Sullivan. All the evidence necessary for the Board to reach its
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`determination on combinability was therefore before it by the time of the
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`Institution Decision. Nonetheless, the Final Written Decision reverses the Board’s
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`position in the Institution Decision regarding the combinability of Sullivan, even
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`though the record was substantially the same. Petitioner has therefore been
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`unjustly prejudiced by the Board’s delayed holding because Petitioner is now
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`subject to estoppel that would not apply had the Board simply denied institution.
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`III. THE BOARD MISAPPREHENDED THE SULLIVAN
`COMBINATION AND OVERLOOKED KEY ARGUMENTS AND
`EVIDENCE
`A.
`
`Sullivan teaches masks and is therefore combinable for the same
`reasons as Passmore.
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`The Board based its holding that Sullivan was not combinable with the ‘081
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`and/or ‘670 Patents almost entirely on the erroneous conclusion that Sullivan does
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`not rely on masks. See Paper 54 at p. 44-45:
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` “Sullivan describ[es] a system that is unrelated to [] masking”
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` “Petitioner makes no attempt to show that Sullivan relates to masks”
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` “Sullivan does not describe masks, reuse of masks…”
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`However, as petitioner’s expert, Dr. Forsyth, testified on cross-examination,
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`“Sullivan makes it clear that masks would be helpful.” Ex. 2021at 25:21-22.
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`Respectfully, the Board appears to have overlooked and misapprehended
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`arguments in the Petition and Dr. Forsth’s testimony that make it clear that
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`Sullivan does indeed teach masks and is therefore combinable for the same reasons
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`that Passmore (which also teaches masks) is combinable.
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`To begin, the Petition noted that Sullivan “claims a method that comprises
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`‘projecting at least a portion of a first 2D image…onto computer-generated
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`geometry.’” Petition, Paper 1 at p. 14 (quoting Sullivan, Ex. 1006 at 17:14-15).
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`Of course, the only way to project just “a portion” of an image is to delineate the
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`specific portion of the image that is actually projected—i.e., create a mask. (As
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`this Board is aware from the related IPR2016-01491 directed to a CIP of the ‘793
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`Patent, a mask is just a data structure used to identify a group of picture elements
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`to be acted upon. See, e.g., IPR2016-01491, Paper 37 at p. 2-4.) It is obviously
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`impossible to project only “a portion” of an image without having created a data
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`structure to identify the specific group of pixels that will be projected—i.e.,
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`without creating a mask.
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`A helpful illustration can be seen in Figures 60 and 62 of ‘793 Patent,3
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`which show a blue mask associated with the man’s face being projected onto a
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`green, 3D generic head shape (the hole in the blue mask is a result of that portion
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`of the man’s face being occluded by the crystal ball in the original 2D image):
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`3 Color images taken from IPR2016-01491, Ex. 2003.
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`Clearly it is not the entire 2D image that is projected onto the virtual 3D head,
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`rather only the mask associated with the man’s face is projected onto the 3D head.
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`In the same way, the Petition discussed extensively Sullivan’s key teaching that:
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`A final image of a car can be associated with
`fundamental geometry describing the shape of the car . . .
`such as a cube for the body and spheres for the wheels.
`Petition, Paper 1 at p. 31 (quoting Sullivan, Ex. 1006 at 4:19-23). Obviously only
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`the wheel portion of the image is projected onto the sphere and only the car portion
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`of the image is projected onto the cube. It is impossible to perform the 3D
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`conversion process of Sullivan, which projects “portions” of an image, without
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`delineating the specific portions of the image that are actually going to be
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`projected, i.e., without creating a mask. That is why Dr. Forsyth testified that
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`“Sullivan says you would like to align 3-D primitive shapes to images to recover
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`depth. Alignment benefits from masks.” Ex. 2021 at 26:10-12.
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`The Board appears to have overlooked this live testimony from Dr. Forsyth
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`and instead relied on a portion of Dr. Forsyth’s testimony that was never discussed
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`by anyone prior to the Final Written Decision. Specifically, the Board held that
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`Dr. Forsyth’s live testimony regarding reasons to combine “referred only to
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`Passmore,” not to Sullivan, when Dr. Forsyth stated that “you can benefit from
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`[the] work of making masks for movies that have been colorized.” Paper 54 at p.
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`44 (citing Ex. 2021 at 31:12-15). But as shown above, the Board overlooked the
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`fact that Dr. Forsyth had just testified about the relevance of masks specifically to
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`Sullivan (see Ex. 2021 at 25:21-22 and 26:10-12), which appears to have caused
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`the Board to misapprehended the import of Dr. Forsyth’s response at 31:12-15.
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`Although the Petition did not use the term “mask” in describing Sullivan, the
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`Petition expressly quoted the portions of Sullivan that make clear that Sullivan
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`teaches masks because Sullivan projects only selected “portions” of the 2D image
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`onto the 3D shapes. Sullivan’s teachings regarding masks would certainly have
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`been clear to a POSITA, who the Board held would have “a good working
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`knowledge of [] data structures and image processing,” given that a mask is
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`defined as a data structure used in image processing. See Paper 54 at p. 8-9. Thus,
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`as Dr. Forsyth testified, the relevance to Sullivan of masks such as those taught by
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`the ‘081 and ‘670 Patents is “clear”—clear enough where Patent Owner never
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`disputed the connection between Sullivan and masks, nor the reasons to combine
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`Sullivan more generally.
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`Given that Sullivan teaches masks, the Petition argued that there were strong
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`market forces motivating the reuse of colorization masks such as those taught by
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`the ‘081 and ‘670 Patents for use in depth projects. Paper 1 at p. 16-17 (“the
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`enormous effort of generating [colorization] masks for an entire movie may thus be
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`leveraged”). The Petition’s reason to combine was supported by the
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`uncontroverted testimony of Dr. Forsyth. Id. (citing Dr. Forsyth Dec., Ex. 1009 at
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`¶¶ 48-49). Dr. Forsyth supported his conclusion that one of ordinary skill would
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`have reasons to combine Sullivan with multiple pieces of evidence, including (1)
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`prior art Passmore expressly stated that it was beneficial to reuse colorization
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`masks for depth-conversion projects, and (2) the alleged inventor of the ‘793
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`Patent said that depth-conversion projects are the “logical extension” of
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`colorization processes. Ex. 1009 at ¶¶ 48-49. Notably, the Board agreed with the
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`Passmore combination, which relied on the same uncontroverted testimony of Dr.
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`Forsyth that relied in turn on the same supporting evidence. Paper 54 at p. 28-29.
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`The Board therefore appears to have fundamentally misapprehended the
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`argument set forth in the Petition in multiple ways:
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` The Board’s erroneous conclusion that Sullivan does not teach masks caused
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`the Board to incorrectly conclude that the Petition cites “Passmore for the
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`asserted combination of Passmore—not Sullivan—with the ‘081 and ‘670
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`patents.” Paper 54. at p. 43-44. That is simply incorrect; the Petition relied
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`on Dr. Forsyth’s testimony, which cited Passmore’s teaching as one piece of
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`evidence in support of his conclusion that a person of ordinary skill would
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`have reason to combine Sullivan, namely to reuse masks previously created
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`for colorization projects to benefit from all of that earlier labor.
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` Contrary to the holding of the Final Written Decision, Dr. Forsyth’s opinion
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`regarding Sullivan was not “conclusory” because it was supported by
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`multiple pieces of evidence, including the teachings of Passmore and
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`statements by the alleged inventor of the ‘793 Patent. See Paper 54 at p. 43.
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`To be sure, there is nothing unique about Passmore’s masks relative to
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`Sullivan’s masks that would make Passmore properly combinable with the ‘081
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`and/or ‘670 Patents but Sullivan somehow not properly combinable.4 Indeed,
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`Patent Owner never argued that there were any differences at all between Passmore
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`and Sullivan that were relevant to reasons to combine, let alone any difference in
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`their masks. As a result, the reasons to reuse colorization masks that were
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`sufficient to support the Passmore combination are necessarily sufficient reasons to
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`combine Sullivan with the same references in substantially the same way. See
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`Paper 54 at p. 29 (“an artisan of ordinary skill would have been motivated to re-use
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`these masks…in order to augment depth of an image…thereby leveraging ‘[t]he
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`enormous effort of generating masks for an entire movie.’”).
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`B. Combining Sullivan requires the same simple substitution as
`combining Passmore.
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`4 It would be unreasonable to assert that any potential difference in masks would
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`be material to a person of ordinary skill, who would have “several years of
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`practical working experience,” a “good working knowledge of computer
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`programming, data structures, and image processing,” and a B.S. Paper 54 at p. 9.
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`The ‘081 Patent teaches the limitations of Claim 1 of the challenged ‘793
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`Patent effectively verbatim except for the single substitution of a “depth
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`parameter” in place of the ‘081 Patent’s “color parameter.” Petition, Paper 1 at p.
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`9. The Petition argued that all that was necessary was a “simple substitution of one
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`known element from Passmore or Sullivan—depth—for another element from the
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`[] ‘081 Patent—color….” Petition, Paper 1 at p. 17. Notably, all of the claims of
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`the ‘793 Patent that survived (claims 3-6 and 15-18) teach dependent limitations
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`that modify only the step of setting a depth parameter. Thus, for the surviving
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`claims, the actual modification necessary to render them obvious was essentially
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`the same substitution needed to render obvious Claim 1—namely, substituting a
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`depth parameter in place of a color parameter, albeit a depth parameter that was set
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`by the specific operations found in the surviving dependent claims.
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`The Petition noted the similarity between Passmore’s methods of setting
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`depth parameters—which was held properly combinable and rendered obvious
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`Claim 1—with Sullivan’s method of setting depth parameters:
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`Sullivan itself also discloses setting a “depth parameter,”
`just as Passmore disclosed that limitation per the
`analysis of Claim 1 above.
`Paper 1 at p. 31. The only difference between the two is that Sullivan expressly
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`teaches setting depth parameters by placing 3D shapes in virtual space by
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`translating, rotating, and resizing the 3D shapes, and then projecting portions of the
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`2D image onto those shapes. See Petition, Paper 1 at p. 29-34 and 37-39 (quoting
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`Sullivan at Abstract (“The image data has depth values associated with the
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`computer-generated geometry.”)). But as Dr. Forsyth testified, there is nothing
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`unique or unpredictable about Sullivan’s method of setting depth parameters
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`relative to Passmore’s method of setting depth parameters that would affect the
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`substitution analysis. Petition, Paper 1 at p. 17 (citing Forsyth Dec. Ex. 1009 at
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`¶¶ 48-49). Indeed, as Dr. Forsyth testified at his deposition:
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`once you have attached a depth parameter using a mask
`in the same way that you might attach a color parameter
`using a mask, then all of the other things that you would
`do with common background elements, transparency
`masks, and the like, are going to work the same.
`Ex. 2021 at 212:7-12. The result is that the reason to substitute Passmore’s depth
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`parameter is necessarily applicable with the same force to substituting Sullivan’s
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`depth parameter, and substituting Sullivan’s depth parameter beneficially
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`incorporates the concomitant operations on 3D geometric depth shapes that are
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`found in the surviving dependent claims. The alleged inventor of ‘793 Patent
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`stated that substituting depth for color was a “logical” step, and there is no reason
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`that such a substitution would be “logical” only with respect to Passmore’s depth
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`parameter but not to Sullivan’s depth parameter. See Petition, Paper 1 at p. 17-18.
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`10409622
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`- 15 -
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`Dated: January 16, 2018
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`IRELL & MANELLA LLP
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`By: /Joshua Glucoft/
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`Joshua Glucoft, Reg. No. 67,696
`Attorneys for Petitioner
`Prime Focus Creative Service Canada Inc.
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`10409622
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`- 16 -
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. sections 42.6 that a complete copy of
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`the PETITIONER’S REQUEST FOR REHEARING is being served
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`electronically on the 16th day of January, 2018 upon:
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`Daniel N. Yannuzzi, Reg. No. 36,727
` Trevor J. Quist, Reg. No. 75,856
` Sheppard Mullin Richter & Hampton LLP
` 12275 El Camino Read, Ste. 200
`San Diego, A 92130 (858)720-8924
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`dyannuzzi@sheppardmullin.com
` tquist@sheppardmullin.com
` Sheppard-Legend3DIPR@sheppardmullin.com
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`/s/Susan M. Langworthy
` Susan M. Langworthy
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`10409622
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`- 17 -
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