PATENT OWNER’S RESPONSE
`IPR2016-01243
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`Prime Focus Creative Services Canada Inc.,
`Petitioner,
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`v.
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`Legend3D, Inc.,
`Patent Owner.
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`__________________
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`Case IPR2016-01243
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`U.S. Patent No. 7,907,793
`__________________
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`PATENT OWNER’S RESPONSE TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,907,793
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`SMRH:482151967.3
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`PATENT OWNER’S RESPONSE
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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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`INTRODUCTION ............................................................................................. 1
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`THE PERSON OF ORDINARY SKILL IN THE ART ................................... 1
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`III. CLAIM CONSTRUCTION .............................................................................. 2
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`A.
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`B.
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`C.
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`The Institution Decision .......................................................................... 2
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`Petitioner’s Claim Constructions are Unreasonably Narrow. ................. 2
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`Plain and Ordinary Meaning for “Depth Parameter” .............................. 3
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`IV. BACKGROUND ON RELEVANT TECHNOLOGY...................................... 3
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`A. Depth Cues in 2-Diminensional Images ................................................. 3
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`B.
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`C.
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`Color, Shading, Perceived Shape, and Perceived Depth ....................... 12
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`Depth Enhancement vs. 2D to 3D Conversion ..................................... 13
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`V.
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`THE ’793 PATENT AND CHALLENGED CLAIMS ................................... 14
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`VI. THE ’081 AND ’670 PATENTS DISCLOSE THE CLAIMED
`“DEPTH PARAMETER.” ............................................................................... 15
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`A.
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`B.
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`Legal Standard for Priority .................................................................... 15
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`The ’081 Patent and ’670 Patents Reasonably Conveyed the
`“Depth Parameter” to a POSITA. ......................................................... 16
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`VII. PETITIONER’S CHALLENGES TO CLAIMS 1 THROUGH 20
`FAIL. ................................................................................................................ 19
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`A. None of Petitioner’s Cited Documents Qualify as Prior Art. ............... 19
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`B.
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`Petitioner Has Failed to Show Claims 4-6 and 16-18 are Not
`Valid. ..................................................................................................... 20
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`VIII. CONCLUSIONS ............................................................................................. 22
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`PATENT OWNER’S RESPONSE
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`TABLE OF AUTHORITIES
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`Cases
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`Page(s)
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`Fujikawa v. Wattanasin
`93 F.3d 1559 (Fed. Cir. 1996) ............................................................................ 15
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`Hyatt v. Boone
`146 F.3d 1348 (Fed. Cir. 1998) .......................................................................... 15
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`In re Rijckaert
`9 F.3d 1531 (Fed. Cir. 1993)………………………………………………….......20
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`Other Authorities
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`MPEP 2112, IV ........................................................................................................ 20
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`PATENT OWNER’S RESPONSE
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`I.
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`INTRODUCTION
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`Petitioner challenges the validity of independent claims 1, 13, and 20,
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`and dependent claims 2-12 and 14-19 of U.S. Patent No. 7,709,793 to B. Sandrew
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`(“the ’793 Patent”) on eight grounds. Each of these eight grounds fails at least
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`because claims 1-20 of the ’793 Patent are entitled to its earliest claimed priority
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`date, thus disqualifying Petitioner’s alleged prior art. Additionally, Petition failed
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`to demonstrate that claims 4-6 and 16-18 are invalid. Accordingly, Legend3D, Inc.
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`(“Patent Owner”) requests that the challenged claims of the ’793 Patent be
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`confirmed as valid.
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`II. THE PERSON OF ORDINARY SKILL IN THE ART
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`Patent Owner believes a person of ordinary skill in the art
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`(“POSITA”) would have had at least an undergraduate degree in electrical
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`engineering or computer science (or an equivalent subject) and would have been
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`someone with a good working knowledge of computer programming, data
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`structures, and image processing. Vazquez Dec. at ¶¶ 20-24. In addition to the
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`undergraduate degree, the person would have gained this knowledge through
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`several years of practical working experience. Id. at ¶ 21.
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`This description is approximate, and a higher level of education or
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`skill might make up for less experience, and vice-versa. Vazquez Dec. at ¶ 21.
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`Petitioner argues for a different skill level (bachelor’s degree plus 7 or more years
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`of experience in the field) (Paper 1 at pp. 18-19), but either way, nothing in the
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`record suggests alternative skill levels would lead to a different interpretation of
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`the evidence.
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`III. CLAIM CONSTRUCTION
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`A. The Institution Decision
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`The Board did not construe any claim terms for the purpose of its
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`Institution Decision. Paper 14.
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`B.
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`Petitioner’s Claim Constructions are Unreasonably Narrow.
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`With respect to the claimed “depth parameter,” Dr. Forsyth and
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`Petitioner did not provide an explicit claim construction for this term. See
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`generally Paper 1; Ex. 1009. Dr. Forsyth’s opinion, however, appears to be based
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`on his position that the broadest reasonable interpretation of the term “depth
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`parameter” is “a parameter that gives the depth of the root system of a shape.” Ex.
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`2021 at 168:14-22, 169:6-12.1
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`There is no evidence on the record that this construction is an
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`appropriate broadest reasonable interpretation of “depth parameter” in view of the
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`1 All citations to Ex. 2021 are deposition transcript pages as opposed to exhibit
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`pages.
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`specification of the ’793 Patent. Dr. Forsyth’s declaration does not point to any
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`specific support from the ’793 Patent or any other document for his construction of
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`“depth parameter.” Nor has he or Petitioner provided any reasoning or explanation
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`in support of this construction.
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`C.
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`Plain and Ordinary Meaning for “Depth Parameter”
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`Under the broadest reasonable interpretation in view of the
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`specification, the term “depth parameter” should be construed as “a parameter that
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`provides a perceived depth of an object or region in an image.” Ex. 2024 at ¶ 44.
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`The plain and ordinary meaning for the term “depth parameter” includes, for
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`example, the saturation and luminance parameters of color taught by the ’081
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`Patent. Ex. 2024 at ¶ 44. At the time of the ’081 Patent, the use of saturation and
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`luminance to create perceived depth was well known in the art. Ex. 2024 at ¶ 44.
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`The saturation and luminance of objects in an image thus “relate[] to the perceived
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`distance of an object from the camera,” and hence provide examples of depth
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`parameters under Petitioner’s description of that term. Paper 1 at p. 10; Ex. 1009
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`at ¶ 39; Ex. 2024 at ¶ 44.
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`IV. BACKGROUND ON RELEVANT TECHNOLOGY
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`A. Depth Cues in 2-Diminensional Images
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`Monocular depth cues have been used in two-dimensional images for
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`many years, including well before the priority date of the ’081 Patent. Ex. 2024 at
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`¶¶ 25-26. For example, such depth cues have been and still are used in
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`photographs and films to realistically depict scenes on a two-dimensional plane
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`(e.g., a movie screen or photograph). Ex. 2024 at ¶ 25; Ex. 2009 at p. 20.
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`Monocular depth cues were known to Renaissance painters in the 1500s. Ex. 2024
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`at ¶ 26; Ex. 2009 at p. 19. Almost all depth cues can be perceived on a flat screen.
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`Ex. 2024 at ¶ 26; Ex. 2009 at p. 54. Depth cues include aerial perspective, as well
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`as shadows and shading. Ex. 2024 at ¶ 26; Ex. 2009 at pp. 57-58.
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`The aerial perspective depth cue provides haze. This necessarily
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`causes hazy objects to appear to be farther away than objects for which there is no
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`intervening haze. Ex. 2024 at ¶ 27. The color image below shows a lower color
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`saturation for background objects, which adds haze to those objects. Ex. 2024 at ¶
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`27. In other words, the haze depth cue is created in the photograph below by
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`modifying the saturation of colors. Ex. 2024 at ¶ 27. It can be appreciated in the
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`below photograph that due to the haze, the mountains in the background appear
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`farther away than those of the foreground—i.e., that the mountains in the
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`background have different perceived depths than the mountains in the foreground.
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`Ex. 2024 at ¶ 27.
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`Figure 2.4 of Lipton (reproduced below) shows an aerial perspective
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`in which “haze contributes to making the background look far away.” Ex. 2024 at
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`¶ 28; Ex. 2009 at p. 57. As shown, the haze has the effect of making the trees in
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`the background look farther away than the darker trees in the foreground. Ex.
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`2024 at ¶ 28. That is, the haze is used to create different perceived depths for
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`various objects in the 2D plane.
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`Shadings and shadows also provide visual cues regarding the shape of
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`objects and their relative distance from one another. Ex. 2024 at ¶ 29; Ex. 2009 at
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`pp. 57, 58 (Fig. 2.5). Lipton taught that “[c]ast shadows provide an effective depth
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`cue, as does light coming from one or more directions.” Ex. 2009 at p. 57. Indeed,
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`Lipton’s Figure 2.5 (reproduced below) uses light and shade as depth cues to create
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`different perceived shapes. Ex. 2024 at ¶ 29; Ex. 2009 at 58. If the light is
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`assumed to be coming down from above (top to bottom), then the shadow on the
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`left shape causes it to appear to pop out whereas the shadow on the right shape
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`causes it to appear to pop in. Ex. 2024 at ¶ 29.
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`The creation of an impression of perceived depth in 2-dimensional
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`images using subtle variations in shading was well-known at the time of the ’081
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`Patent. Ex. 2024 at ¶ 30; Ex. 2010 at p. 2. Shading was thus considered a
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`monocular depth cue at the time of the ’081 Patent. Ex. 2024 at ¶ 30; Ex. 2010 at
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`p. 17. For example, a 1992 publication by Kleffner and Ramachandran described
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`that “Figure 1 [reproduced below] depicts a set of objects that conveys a strong
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`impression of depth.” Ex. 2024 at ¶ 30; Ex. 2010 at p. 3. The objects in Figure 1
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`of Kleffner “convey an impression of depth based exclusively on subtle variations
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`in luminance.” Ex. 2010 at p. 3. Thus, even absent other depth cues, the use of
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`shading (variation in luminance) to convey a perception of depth was understood at
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`the time of the ’081 Patent. Ex. 2024 at ¶ 30; Ex. 2010 at p. 3 (Figure 3 caption).
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`A book co-authored by Petitioner’s expert Dr. Forsyth around the time
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`of the ’081 Patent also demonstrates how shading serves as a depth cue. Ex. 2024
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`at ¶ 31. For example, in Figure 5.10 (reproduced below), Dr. Forsyth’s book
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`shows five two-dimensional views of images of a sphere. Ex. 2024 at ¶ 31; Ex.
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`2020 at p. 4. Each of the five views shows the sphere with self-shadows created
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`from variations in brightness distributed over the sphere. Ex. 2024 at ¶ 32; Ex.
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`2020 at p. 4; Ex. 2021 at 176:19-177:2. The variations in brightness act as a cue
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`from which a viewer recovers the shape in the depth dimension of the surface. Ex.
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`2024 at ¶ 32; Ex. 2020 at p. 4; Ex. 2021 at 177:3-8. Thus, color, in this example
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`shading, is being used to create perceived shape. Ex. 2024 at ¶ 32. Perceived
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`shape implies that different points on the object have different depths. Ex. 2024 at
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`¶ 32; And therefore, perceived shape implies perceived depth. Ex. 2024 at ¶ 32.
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`In Figure 5.11 of Dr. Forsyth’s book, the representation of the same
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`sphere without any shading appears to be flat or 2-dimensional. Ex. 2024 at ¶ 33;
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`Ex. 2020 at p. 5. In other words, the uniform luminance across the image of the
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`sphere in this case creates the perception that the object is something other than a
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`sphere (e.g., a flat disk). Ex. 2024 at ¶ 33; Ex. 2021 180:19-23; Ex. 2020 at p. 5.
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`Finally, Petitioner’s U.S. Patent No. 8,922,628 (“Bond”) also teaches
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`monocular depth cues include haze and shadows. Ex. 2024 at ¶ 34; Ex. 2005 at
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`35:35-37. The Bond patent also implies that these depth cues were well known
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`and are part of the nature of 2D film-making—which they were. Ex. 2024 at ¶ 34.
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`As another example, a 1994 paper by Kersten et al. described how
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`increasing the displacement between shadows cast by three identical squares
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`produces an impression of different depths for each square relative to the
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`background. Ex. 2024 at ¶ 35; Ex. 2023 at p. 2 (Figure 1 and accompanying text).
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`Figure 1, reproduced below, illustrates this concept. Ex. 2024 at ¶ 35.
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`As shown in Figure 1, the placement of the shadows, which are
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`created by varying the luminance (as described below) of the background image
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`within the shadows, causes the left-most square to appear to be closer to the
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`background than the right-most square. Ex. 2024 at ¶ 36. Thus, Kertsen’s paper
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`teaches how shadows alter the perceived depth of an object. Ex. 2024 at ¶ 36; See
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`also Ex. 2021 at 130:20-22 (referring to Kersten paper).
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`B. Color, Shading, Perceived Shape, and Perceived Depth
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`The HSL (Hue, Saturation, Luminance) color space is one of a
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`number of ways of defining color. Ex. 2024 at ¶ 37. Even before the time of the
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`’081 Patent, Hue, Saturation, and Lightness (sometimes Luminance) was one of
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`the major color spaces known at least as early as the time of the ’081 Patent. Ex.
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`2024 at ¶ 37; Ex. 2007 at pp. 1, 10; Ex. 2021 at p. 118:6-21 (testifying that
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`lightness and luminance are about the same), 121:14-24.
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`At a high level, hue generally identifies what is commonly referred to
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`as “color.” Ex. 2024 at ¶ 37; Ex. 2006 at p. 7. Saturation of a color identifies how
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`pure or intense the color is. Ex. 2024 at ¶ 37; Ex. 2006 at p. 7. As the saturation
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`decreases, the color gets paler and more washed out. Ex. 2024 at ¶ 37; Ex. 2006 at
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`p. 7. Luminance is a measure of a color’s perceived brightness. Ex. 2024 at ¶ 37;
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`Ex. 2006 at p. 7.
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`Dr. Forsyth’s book from around the time of the ’081 Patent also
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`shows that the HSL color model (or very similar HSV model as he describes it)
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`was known in the art and understood by POSITAs. Ex. 2024 at ¶ 38; Ex. 2020 at
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`p. 8 (discussing HSV model); Ex. 2021 at 181:8-182:9; See also Ex. 2007 at p. 1,
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`10 (discussing HSV color model).
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`As mentioned above, the Saturation and Luminance aspects of color
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`in the HSL color space are related to shading (luminance), perceived shape, and
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`perceived depth. Ex. 2024 at ¶ 39. Color is thus an important component of
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`several monocular depth cues that were used at the time of the ’081 Patent to
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`indicate depth ordering of objects, perceived relative depth of objects, and/or depth
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`within an object (e.g., shape). Ex. 2024 at ¶ 39; Ex. 2021 at 77:17-20 (testifying
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`that “[m]onoscopic depth cues can create a perception of depth”).
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`For example, Dr. Forsyth testified in this proceeding that luminance
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`can be used to create a sense of shape and that changes in saturation can act as cues
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`to depth. See, e.g., Ex. 2021 at 79:12-14. Dr. Forsythe further testified that
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`adjusting luminance can create the perception that the depth of one point on a
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`sphere, for example, is different from the depth of another point on the sphere. Ex.
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`2021 at 87:13-23. In other words, “those two points are perceived to have different
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`depths.” Ex. 2021 at 88:6-8. Petitioner’s expert thus agrees with Patent Owner’s
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`expert that saturation and/or luminance can create perceived depths in images. See
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`Ex. 2024 at ¶ 39.
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`C. Depth Enhancement vs. 2D to 3D Conversion
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`At least as early as the ’081 Patent, color-related (pictorial) depth cues
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`were used to enhance the sense of depth in a 2D image. Ex. 2024 at ¶ 40; see, e.g.,
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`Ex. 2009 at pp. 57 (Figure 2.4), 58 (Figure 2.5). As the Bond patent
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`acknowledges, using 2D depth cues is, and was at the time of the ’081 Patent, part
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`of the nature of traditional film-making. Ex. 2024 at ¶ 40; Ex. 2005 at 35:35-38.
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`This type of depth enhancement can be done whether or not there is a stereoscopic
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`conversion being done on a particular image. Ex. 2024 at ¶ 40.
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`V. THE ’793 PATENT AND CHALLENGED CLAIMS
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`The ’793 Patent and its parent patents, the ’081 and ’670 Patents,
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`teach that an artist can manipulate various parameters, including for example any
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`combination of hue, saturation, and luminance. Ex. 2024 at ¶ 41; see, e.g., Ex.
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`1003 at 9:2-8. As described above, it was well known at the time of the ’081
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`Patent how altering the saturation and/or luminance components of the HSL color
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`model as taught by the ’081 Patent creates depth cues that affect depth perception.
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`Ex. 2024 at ¶ 41; see, e.g., Ex. 1003 at 9:18-26. For example, the ’081 Patent
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`teaches that the image designer can “correctly lighten or darken” the color (HSL)
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`of an object as appropriate “with the introduction of shadows or bright light.” Ex.
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`2024 at ¶ 41; Ex. 1003 at 9:18-26.
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`While this general concept was well-known and understood by
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`POSITAs by the time of the’081 Patent (see, e.g., Ex. 2009 at p. 57 (Figure 2.4);
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`Ex. 2007 at p. 10; Ex. 2021 121:14-122:7; Ex. 2023 at p. 2 (Figure 1)), the ’081
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`Patent introduced the concept of automatically applying the created color effects of
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`masks in a single key frame to subsequent frames, for example using mask fitting
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`techniques. Ex. 1003 at Abstract, 1:55-2:6; Ex. 2024 at ¶ 42. The ’793 claims the
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`specific embodiments taught in the ’081 Patent that relate to altering color,
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`including saturation and luminance, in a way that creates depth cues that affect the
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`perceived depth of objects. Ex. 1001 at 34:57-36:52; Ex. 2024 at ¶ 42.
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`The ’793 Patent also describes stereoscopic conversion of a two-
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`dimensional image into a three-dimensional image, but nothing in the claims
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`requires stereoscopic or 3D conversion. Ex. 1001 at 34:58-36:52; Ex. 2024 at ¶ 42;
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`see also Ex. 2021 at 74:9-13 (acknowledging that claims do not recite 3-D
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`conversion), 76:5-12 (acknowledging that claims do not recite stereoscopic
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`conversion).
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`VI. THE ’081 AND ’670 PATENTS DISCLOSE THE CLAIMED “DEPTH
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`PARAMETER.”
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`A. Legal Standard for Priority
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`In order for a claim to get priority to an earlier-filed application, it
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`must be shown that “any absent text is necessarily comprehended in the description
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`provided and would have been so understood at the time the patent application was
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`filed.” Hyatt v. Boone, 146 F.3d 1348, 1354-55 (Fed. Cir. 1998). “[T]he
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`disclosure need only reasonably convey to persons skilled in the art that the
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`inventor had possession of the subject matter in question.” Fujikawa v.
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`Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996).
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`B.
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`The ’081 Patent and ’670 Patents Reasonably Conveyed the
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`“Depth Parameter” to a POSITA.
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`At the time of the ’081 Patent, a POSITA would have understood that
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`color, including in particular saturation and/or luminance as taught by the ’081
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`Patent, was used to create depth cues that indicate perceived depths of objects in an
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`image. Ex. 2024 at ¶ 45.
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`For example, the ’081 Patent teaches that objects in scenes can be
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`classified into two separate categories: stationary background elements and
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`motion elements that move through the scene. Ex. 1003 at 1:55-59; Ex. 2024 at ¶
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`46. Within each of these categories, the ’081 Patent further teaches that a designer
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`can assign color to a plurality of pixels in a frame using an HSL color space model.
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`Ex. 1003 at 9:4-6; Ex. 2024 at ¶ 46. The designer can make this assignment “based
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`on creative considerations and the grayscale and luminance distribution underlying
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`each mask.” Ex. 1003:6-8; Ex. 2024 at ¶ 46.
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`The ’081 Patent further explains that “[s]ince the color applies to the
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`feature extends the entire range of potential grayscale values from dark to light the
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`designer can insure that as the distribution of the gray-scale values representing the
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`pattern change homogenously into dark or light regions within subsequent frames
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`of the movie such as with the introduction of shadows or bright light, the color for
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`each feature also remains consistently homogenous and correctly lighten or darken
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`with the pattern upon which it is applied.” Ex. 1003 at 9:17-26; Ex. 2024 at ¶ 46.
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`In other words, according to the ’081 Patent, the color of the object,
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`for example the luminance, can be varied to account for the introduction of
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`shadows or bright light. Ex. 1003 at 9:17-26; Ex. 2024 at ¶ 47. In this regard, the
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`’081 Patent also teaches that a background mask overlay can be created where the
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`mask overlay represents designer-selected “color lookup tables in which dynamic
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`pixel colors automatically compensate or adjust for moving shadows and other
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`changes in luminance.” Ex. 1003 at 3:47-51; see also id. at 26:66-27:20 (teaching
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`that “assigned colors will automatically adjust according to luminance and/or
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`according to pre-selected color vectors compensating for changes in the underlying
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`gray scale density and luminance), 27:40-49 (same); Ex. 2024 at ¶ 47. For
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`example, without adjusting the color of an object over which shadow falls in a
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`subsequent frame, the object may appear not to be in the shadow. Ex. 2024 at ¶
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`47; Ex. 2021 151:12-152:10. That is, a POSITA would have understood that the
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`failure to compensate for shadows by adjusting for luminance could disrupt at least
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`the desired perceived depth ordering in the scene. Ex. 2024 at ¶ 47.
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`It was also understood at the time of the ’081 Patent how the
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`distribution of luminance (e.g., shadows) or saturation was used as a depth cue to
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`create perceived relative depth or depth ordering. Ex. 2024 at ¶ 48. There is ample
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`evidence from publications in the field showing this. Ex. 2024 at ¶ 48; Ex. 2022 at
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`6:17-28 (describing that “distant landscape elements may be made hazy or bluish
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`to indicate remoteness), 9:10-18 (describing different depths being assigned to
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`different aspects of a shaped object based on color/shape); Ex. 2005 (Bond) at
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`35:35-37 (“The nature of 2D film-making is to create monoscopic depth cues such
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`as haze, shadow, and lighting (not ‘flat’ surfaces) to make the scene more visually
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`interesting . . . .”); Ex. 2009 at p. 56 (fig. 2.4 (haze/aerial perspective)); p. 57 (fig.
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`2.5 (shading)); Ex. 2010 (shading and perceived depth); Ex. 2020 at pp. 4-5 (using
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`shading to create different perceived depths across a sphere).
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`As discussed above, at the time of the ’081 Patent, it was understood
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`by POSITAs that such monoscopic depth cues include, for example shadows,
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`shading, and haze. Ex. 2024 at ¶ 49. A POSITA would have known and
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`understood that there existed luminance cues to perceived depth, and that changes
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`in saturation can act as cues to depth. Ex. 2021 at 79:10-14; Ex. 2024 at ¶ 49.
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`Likewise, such a person would have understood the use of monoscopic depth cues
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`to create a perception of depth. Ex. 2021 at 77:17-20; Ex. 2024 at ¶ 49.
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`Accordingly, based on the ’081 Patent’s disclosure, including its
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`teaching of how artists use the HSL color space model in connection with
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`assigning color to pixels and varying the same, its teaching as a whole as described
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`above, and on the state of the art at the time, a POSITA would have understood the
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`’081 Patent to teach variations in saturation and/or luminance that create a
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`perceived depth, perceived relative depth, and/or perceived depth ordering of
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`objects. Ex. 2024 at ¶ 50.
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`The POSITA would likewise have understood the claimed “depth
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`parameter” to relate to the creation of perceived depth, perceived relative depth,
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`and/or perceived depth ordering of objects. Ex. 2024 at ¶ 51. Thus, the POSITA
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`would have understood the ’081 and ’670 Patents to suggest, implicitly teach, and
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`reasonably convey the “depth parameter” as claimed in the ’793 Patent. Ex. 2024
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`at ¶ 51.
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`For the foregoing reasons, claims 1-20 of the ’793 Patent are entitled
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`to priority from the earlier filed ’081 and ’670 Patents.
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`VII. PETITIONER’S CHALLENGES TO CLAIMS 1 THROUGH 20 FAIL.
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`A. None of Petitioner’s Cited Documents Qualify as Prior Art.
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`Other than the term “depth parameter,” Petitioner concedes there is
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`written description for claims 7, 8, 9, 10, 11, 12, and 19 in the ’081 Patent. Paper 1
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`at pp. 25-29, 37. Because, as discussed above, the claimed “depth parameter” is
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`disclosed by the ’081 and ’670 Patents, claims 1-20 of the ’793 Patent are entitled
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`to the PCT filing date of the ’081 Patent, which is May 6, 2002. Thus, none of the
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`documents Petitioner relies on for its grounds of challenge qualify as prior art.
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`Petitioner’s ground 1-8 thus fail for at least this reason.
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`B.
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`Petitioner Has Failed to Show Claims 4-6 and 16-18 are Not Valid.
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`For claims 4-6 and 16-18, Petitioner has not demonstrated or
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`explained how the features of these claims are expressly shown in the alleged prior
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`art. Instead, Petitioner appears to rely on inherency in its application of the art.
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`See, e.g., Paper 1 at pp. 32 (“the artist must necessarily translate”), 33 (“the artist
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`must necessarily be able to rotate”), 34 (“the artist must necessarily be able to
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`change the size”). But neither Petitioner nor its expert have shown that the claimed
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`features are necessarily found in the alleged prior art.
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`“The fact that a certain result or characteristic may occur or be present
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`in the prior art is not sufficient to establish the inherency of that result or
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`characteristic.” MPEP 2112, IV (citing In re Rijckaert, 9 F.3d 1531, 1534, 28
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`USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversed rejection because inherency was
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`based on what would result due to optimization of conditions, not what was
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`necessarily present in the prior art)).
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`Notably, Petitioner’s expert testified that the claimed features are not
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`actually necessarily found in the alleged prior art. Ex. 2021 at 47:14-19 (admitting
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`that translating the primitive is not always required), 48:2-9 (admitting that rotating
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`the primitive is not always required), 49:11-20 (admitting that re-sizing the
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`primitive is not always required), 223:15-21 (“There are cases in which an artist
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`would not absolutely be required to do translating once the object has been
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`placed.” (emphasis added)), 227:9-16 (“If the primitive is placed in the image, and
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`the artist happened to be fortunate that the placement is satisfactory, then there
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`may be no further need to rotate it.” (emphasis added), 259:21-260:1 (admitting
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`that translating is not always required), 260:3-10 (admitting that rotation is not
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`always required).
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`Therefore, by Petitioner’s own expert’s admissions, and contrary to
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`Petitioner’s positions taken in the Petition, the claimed features are not necessarily
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`disclosed in the prior art.
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`VIII. CONCLUSIONS
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`Patent Owner requests that the Board find that all of the challenged
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`claims are patentable over the asserted prior art.
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`Dated: March 27, 2017
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`Respectfully submitted,
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`/Daniel N. Yannuzzi/
`Daniel N. Yannuzzi, Reg. No. 36,727
`dyannuzzi@sheppardmullin.com
`Trevor J. Quist, Reg. No. 75,856
`tquist@sheppardmullin.com
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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`Counsel for Patent Owner
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE contains 4,449
`words, excluding those items identified in 37 C.F.R. § 42.24(c). Petitioners have
`relied on the word count feature of Microsoft Word.
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`
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`Respectfully submitted,
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`/Daniel N. Yannuzzi/
`Daniel N. Yannuzzi, Reg. No. 36,727
`dyannuzzi@sheppardmullin.com
`Trevor J. Quist, Reg. No. 75,856
`tquist@sheppardmullin.com
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
`
`Counsel for Patent Owner
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`Dated: March 27, 2017
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on March 27, 2017, a
`copy of the foregoing PATENT OWNER’S RESPONSE was filed through the
`Patent Review Processing System and was served via E-MAIL on the Patent
`Owner at the following correspondence address provided by counsel of record for
`the Patent Owner pursuant to 37 C.F.R. § 42.8(b)(4):
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`
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`Josh Glucoft, Esq.
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`jglucoft@irell.com
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`primefocusipr@irell.com
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`Irell & Manella, LLP
`1800 Avenue of the stars, Suite 900
`Los Angeles, CA 90067 – 4276
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`
`
`/Kristina Grauer/
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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`Dated: March 27, 2017
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