Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 30
`
`Entered: February 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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
`____________
`
`
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`Paper 30
`
`Entered: February 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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
`____________
`
`
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`INTRODUCTION
`I.
`Patent Owner Legend3D, Inc. (“Patent Owner”) requests rehearing
`(Paper 17, “Reh’g Req.”) of the Decision mailed December 20, 2016
`(Paper 14, “Decision”) instituting an inter partes review of claims 1–20
`(“Challenged Claims”) of U.S. Patent No. 7,907,793 B1 (“the ’183 patent”)
`(Ex. 1001). In its Request, Patent Owner contends, inter alia, that we
`“instituted based on an incorrect version of the Petitioner’s construction of
`depth parameter,” as recited in each of independent claims 1, 13, and 20 and
`that we otherwise aided Petitioner. Reh’g Req. 3, 15.
`
`“The burden of showing a decision should be modified lies with the
`party challenging the decision . . .” who “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`For the reasons discussed below, Patent Owner’s Request for
`Rehearing is denied.
`
`
`
`BACKGROUND
`II.
`The ’793 patent relates to an image sequence depth enhancement
`system and method that allows for the rapid conversion of a sequence of
`two-dimensional images into three-dimensional images. Ex. 1001, 1:21–25.
`The ’793 patent classifies elements from movie scenes into two separate
`categories: “either background elements (i.e. sets and foreground elements
`that are stationary) or motion elements (e.g., actors, automobiles, etc.) that
`move throughout the scene.” Id. at 2:21–25. In one embodiment, the
`
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`IPR2016-01243
`Patent 7,907,793 B1
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`background elements are combined to create a composite background image,
`and colorization or depth information is applied to the background elements.
`Id. at 15:15–25. In another embodiment, the motion elements are masked
`throughout a scene, and colorization or depth information is applied to the
`masked motion elements. Id. at 2:29–3:5.
`Independent claim 1 of the ’793 patent is reproduced below.
`1. A method for modifying a set of time ordered digital
`images comprising:
`associating a plurality of images comprising common
`background elements;
`obtaining a composite background comprising said
`plurality of
`images wherein said composite background
`excludes a set of motion objects moving in relation to said
`common background elements;
`setting at least one depth parameter associated with a
`region within said composite background;
`applying said at least one depth parameter to at least one
`image selected from said plurality of images using a computer.
`
`Petitioner challenged claims 1–20 of the ’793 patent as obvious,
`relying extensively on U.S. Patent Nos. 7,181,081 B2 (the “’081 patent”)
`(Ex. 1003) and 7,333,670 B2 (the “’670 patent”) (Ex. 1004) as the basis for
`its challenges. See, e.g., Petition (Paper 1, “Pet.”), 19–21, 42–43 (citing the
`’081 patent as teaching or suggesting every limitation of challenged claim 1
`but for the claimed “depth parameter”). Both the ’081 and ’670 patents are
`parents of the ’793 patent, the instant challenged patent.
`In its Preliminary Response, Patent Owner urged that the ’081 and
`’670 patents cannot serve as prior art in an obviousness analysis of the
`Challenged Claims because the ’793 patent is entitled to priority on the basis
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`IPR2016-01243
`Patent 7,907,793 B1
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`of the disclosure in the ’081 and ’670 patents themselves. Preliminary
`Response (Paper 12, “Prelim. Resp.”) 15.
`In our Decision, we determined “based on the record before us and at
`this stage of the proceeding that Petitioner has established a reasonable
`likelihood that it will prevail in showing the Challenged Claims are not
`entitled to a priority date based on the ’081 and ’670 patents.” Decision 10.
`Therefore, we further determined “that the ’081 and ’670 patents are
`available as prior art for purposes of this decision.” Id.
`
`
`III. ANALYSIS
`Patent Owner contends that we erred because: (a) “Petitioner’s Expert
`did not sign his Decl. under penalty of perjury, so the Decl. is not evidence;”
`(b) “The PTAB instituted based on an incorrect version of the Petitioner’s
`construction of depth parameter;” (c) “The Decision overlooks inherency
`compliance for ‘depth parameter’ as construed by the Petitioner;” (d) “The
`PTAB itself makes a lack of written description assertion on behalf of the
`Petitioner, which is not allowed;” (e) “The PTAB uses Petitioner’s assertion
`of lack of explicit disclosure of ‘depth’ for lack of inherency which is legal
`error;” (f) “The PTAB supplied an argument for lack of inherency when the
`Petitioner did not, which is not allowed;” and (g) “The PTAB has further
`aided Petitioner by ignoring Petitioner’s complete disavowal of what a
`POSITA is.” Req. Reh’g 2–14.
`We are not persuaded by Patent Owner’s arguments that anything was
`overlooked or misapprehended. Regarding Patent Owner’s argument (a), we
`resolved this dispute between the parties in our January 30, 2017 Order
`
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`IPR2016-01243
`Patent 7,907,793 B1
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`requiring that Petitioner submit a corrected declaration of Dr. David Forsyth.
`Paper 24. Petitioner complied with our Order on February 2, 2017.
`Regarding Patent Owner’s argument (b), Patent Owner’s argument
`mischaracterizes our Decision. Patent Owner cites a portion of a single
`sentence in which we summarize Dr. Forsyth’s testimony that we described
`more fully earlier in our Decision. Reh’g Req. 3. The complete sentence
`reads: “As discussed above, Dr. Forsyth attests that “depth parameter”
`relates to the distance 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).” Decision 9. Nothing therein indicates reliance on an
`incorrect “version of the Petitioner’s construction” as Patent Owner
`contends. Reh’g Req. 3. Indeed, we did not adopt Petitioner’s construction
`of the term “depth parameter,” but instead found only that Petitioner
`established a reasonable likelihood that it will prevail in showing the
`Challenged Claims are not entitled to a priority date based on the ’081 and
`’670 patents because a person of ordinary skill would not have understood
`the specifications of the ’081 and ’670 patents to describe use of a “depth
`parameter.” Decision 9. Patent Owner’s argument reduces to a mere
`contention that it “show[ed] extensively how Saturation and Luminance
`values are used to alter the perceived distance.” Reh’g Req. 3. We squarely
`addressed Patent Owner’s contention in our Decision:
`With regard to Patent Owner’s contentions, 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
`
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`IPR2016-01243
`Patent 7,907,793 B1
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`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.”
`
`
`Decision 9–10 (emphasis added). Thus, we are not persuaded that we
`misapprehended or overlooked Patent Owner’s contention.
`Patent Owner raises again its alleged “extensive support for using
`Saturation and Luminance to alter the perceived distance” with regard to its
`argument (c). Reh’g Req. 4. Patent Owner’s argument, however, is
`unpersuasive. Patent Owner failed to adduce evidence, either testimonial or
`documentary, refuting Petitioner’s evidence that one of ordinary skill in the
`art would not have understood a single reference in each of the ’081 and
`’670 patents to “an HSL color space model” 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.”
`Patent Owner’s arguments (d) that “[t]he PTAB itself makes a lack of
`written description assertion on behalf of the Petitioner” and (f) that “[t]he
`PTAB supplied an argument for lack of inherency when the Petitioner did
`not” are unfounded. Reh’g Req. 6, 13. As set forth in our Decision, central
`to the dispute between Petitioner and Patent Owner is whether the ’081 and
`’670 patents may serve as prior art in an obviousness analysis of the
`Challenged Claims. Decision 7. This question turns on whether the ’793
`patent is entitled to priority on the basis of the disclosure in the ’081 and
`’670 patents. Id. Under the relevant statutes and controlling case law, the
`issue of whether a claim receives the benefit of an earlier application’s filing
`date requires us to consider whether the limitations of that claim are
`expressly, implicitly, or inherently supported in the earlier-filed disclosure as
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`IPR2016-01243
`Patent 7,907,793 B1
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`understood by a person of ordinary skill in the art at the time of filing. Id.
`Thus, the parties’ contentions—not this Board—placed at issue the question
`of whether the written descriptions of the ’081 and ’670 patents adequately
`support the Challenged Claims.
`We are similarly not persuaded by Patent Owner’s argument (e) that
`we “use[d] Petitioner’s assertion of lack of explicit disclosure of ‘depth’ for
`lack of inherency.” Reh’g Req. 10. We addressed in our Decision Patent
`Owner’s contentions rehashed here. Decision 8–10. Thus, we did not
`misapprehend or overlook Patent Owner’s argument and are not persuaded
`that our Decision was incorrect.
`Finally, Patent Owner’s assertion that our “Decision is based on
`Petitioner’s definition of POSITA” in support of its argument (g) is deficient
`on its face. Reh’g Req. 13. Patent Owner offers no citation to our Decision
`in support of this contention because no such citation is possible; our
`Decision did not adopt Petitioner’s definition of the level of ordinary skill.
`See generally Decision. Moreover, Patent Owner’s argument ignores Patent
`Owner’s assertion that:
`A person of ordinary skill in the art at the time of the
`alleged invention would generally have had at least a
`Bachelor’s degree education or equivalent and seven or more
`years of relevant work experience in the area of image analysis
`or image enhancement; alternatively, if an academic, a person
`of ordinary skill in the art at the time of the alleged invention
`would have had a PhD in a field related to computer image
`analysis or image enhancement and several years of relevant
`research.
`
`
`Pet. 18–19. We note Patent Owner’s Preliminary Response fails to address
`this detailed assertion. Prelim. Resp. 27–28. Instead, Patent Owner chose to
`
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`IPR2016-01243
`Patent 7,907,793 B1
`
`offer in its Preliminary Response a significantly less detailed, circular
`assertion “that a Person of Ordinary Skill in the Art (POSITA) is anyone
`capable of setting a ‘depth parameter’ to affect depth.” Id.
`We are not persuaded, therefore, that we overlooked or misunderstood
`any argument made by Patent Owner in the Preliminary Response. Thus, we
`find no error in our Decision instituting review of claims 1–20.
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314 (a), Patent Owner’s
`Request for Rehearing is denied.
`
`
`
`8
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`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`FOR PETITIONER:
`
`Joshua Glucoft
`Jonathan Kagan
`IRELL & MANELLA LLP
`PrimeFocusIPR@irell.com
`
`PATENT OWNER:
`
`Joseph Mayo
`Danna Cotman
`ARC IP LAW, PC
`joe@arciplaw.com
`danna@arciplaw.com
`
`
`9
`
`
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