IPR2016-01243
`MOTION TO AMEND
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`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.,
`Petitioners,
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`v.
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`Legend3D, Inc.,
`Patent Owner.
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`Case No. IPR2016-01243
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`Patent No. 7,907,793
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`PATENT OWNER’S MOTION TO AMEND
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`TABLE OF CONTENTS
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`Page
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`I.
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`Introduction ...................................................................................................... 1
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`II.
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`Statement of Relief Requested ......................................................................... 2
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`III. Brief Overview of the Proposed Amendments ................................................ 2
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`A.
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`Level of Ordinary Skill in the Art .......................................................... 4
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`B.
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`Claim Construction................................................................................ 4
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`IV. The Substitute Claims meet the Requirements of 37 C.F.R. § 42.121 ............ 5
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`A.
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`The Substitute Claims are Supported by the Written Description
`of the ’670 Patent and the ’081 Patent .................................................. 5
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`B.
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`C.
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`1.
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`2.
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`Substitute Independent Claims .................................................... 5
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`Substitute Dependent Claims .................................................... 12
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`The Substitute Claims Respond To Each Ground in the Petition ....... 14
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`The Substitute Claims are Patentable Over the Prior Art ................... 15
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`1.
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`2.
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`The References Relied upon in the Petitioner are not
`Prior Art to the Substitute Claims ............................................. 15
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`The Substitute Claims are Patentable Over the Prior Art
`of Record ................................................................................... 15
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`D.
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`The Substitute Claims Do Not Enlarge Scope or Add New
`Matter .................................................................................................. 19
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`E.
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`The Number of Proposed Substitute Claims is Reasonable ................ 20
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`V.
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`Conclusion ..................................................................................................... 20
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`The Claims Appendix follows the motion.
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Corning Optical Commc’n RF, LLC, v. PPC Broadband, Inc.
`Case IPR2014-00441 (PTAB Oct. 20, 2014) ....................................................... 5
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`Idle Free Systems, Inc. v. Bergstrom, Inc.
`Case IPR2012-00027 (PTAB June 11, 2013) ....................................................... 5
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`MasterImage 3D, Inc. v. RealD Inc.
`Case IPR2015-00040, slip op. 3 (PTAB July 15, 2015) ...................................... 5
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`MasterImage 3D, Inc. v. RealD Inc.
`IPR2015-00040, Paper 42, Order Conduct of the Proceedings
`(PTAB July 15, 2015) ......................................................................................... 14
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`Nike, Inc. v. Adidas AG
`No. 2014-1719, slip op. (Fed. Cir. Feb. 11, 2016) ............................................. 14
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`VMWare, Inc. v. Clouding Corp.
`IPR2014-01292, Paper 23, Order Conduct of Proceedings (PTAB
`April 7, 2015) ...................................................................................................... 14
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`Statutes
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`35 U.S.C.
`§§ 102, 103 .......................................................................................................... 13
`§ 316(d) ................................................................................................................. 2
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`Other Authorities
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`37 C.F.R.
`§ 42.11 ................................................................................................................. 14
`§§ 42.20(c), 42.121(a)-(b)..................................................................................... 5
`§ 42.121 ............................................................................................................. 1, 4
`§ 42.121(a)(3) ..................................................................................................... 16
`§ 42.121 ................................................................................................................. 2
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`U.S. Patent No. 7,907,793 .................................................................. 1, 2, 4, 6, 14, 15
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`TABLE OF EXHIBITS
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`Exhibit No. Description
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`1001
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`1003
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`1004
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`1005
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`1006
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`2022
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`2024
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`2025
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`2026
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`U.S. Pat. No. 7,907,793 (“the ’793 Patent” or the “patent-at-issue”)
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`U.S. Pat. No. 7,181,081 (“the ’081 Patent”)
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`U.S. Pat. No. 7,333,670 (“the ’670 Patent”)
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`U.S. Pub. No. 2009/0219383 (“Passmore”)
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`U.S. Pat. No. 7,573,475 (“Sullivan”)
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`U.S. Patent No. 4,925,294 (“Geshwind”)
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`Declaration of Carlos Vasquez
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`US Pat. No. 6,141,433 (“Moed”)
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`US Pat. No. 5,940,528 (“Tanaka”)
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`I.
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`Introduction
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`Petitioner’s challenge improperly uses two parent filings of the ’793 Patent
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`(patent-at-issue) as alleged prior art, namely: US Pat. No. 7,181,081 (“the ’081
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`Patent”) and US Pat. No. 7,333,670 (“the ’670 Patent”). Petitioner relies on each of
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`these parent filings in combination with US Pat. No. 7,573, 475 (“Sullivan”) and/or
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`US Pat. App. No. 12/241,992 (“Passmore”) to support each ground of its invalidity
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`challenge. See Petition, p 3-4 (Paper 1). If the Board finds that the claims of the
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`’793 Patent are sufficiently supported by – and therefore properly claim priority to
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`– one or more of these parent filings, Petitioner’s challenge becomes groundless.
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`Though Patent Owner contends the original claims in the ’793 Patent are
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`adequately supported by the parent filings (further explained in the Patent Owner’s
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`Response filed concurrently herewith), in the event the Board holds a different
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`view, Patent Owner moves on a contingent basis to amend original claims 1, 8-13,
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`and 20 to ensure the claims find clear support in the ’081 Patent and the ’670 Patent
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`(thereby making it improper to use either as prior art to the ’793 Patent). In such event,
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`Patent Owner further moves, on a contingent basis, to cancel original claims 2-7 and
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`14-19.
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`The amendments presented in this motion squarely address each ground in
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`Petitioner’s challenge, and further satisfy the requirements of 37 C.F.R. § 42.121.
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`II.
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`Statement of Relief Requested
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`Patent Owner moves under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 to
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`amend the challenged claims of U.S. Patent No. 7,907,793, contingent on the
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`outcome of this trial. For each original claim the Board finds unpatentable, Patent
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`Owner respectfully requests that the Board grant this motion to amend and enter the
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`corresponding substitute claim provided herein.
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`III. Brief Overview of the Proposed Amendments
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`The proposed substitute claims include substantively similar amendments to
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`all three independent claims of the ’793 patent - claims 1, 13 and 20
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`(corresponding to proposed substitute claims 21, 27 and 28 respectively). To focus
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`the Board’s attention on the relevant limitation being amended, the amendment is
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`shown highlighted in green below for each proposed substitute independent claim:
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`Proposed Substitute Claim 21
`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, wherein said at least one depth parameter consists of at
`least one of luminance and saturation;
`applying said at least one depth parameter to at least one image selected from
`said plurality of images using a computer.
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`Proposed Substitute Claim 27
`A method for modifying a set of time ordered digital images comprising:
`associating a first mask with a motion object in a first image;
`copying said first mask to create a second mask associated with a second image;
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`moving said second mask to a location of said motion object in said second
`image;
`reshaping said second mask to fit said motion object in said second image using
`a computer;
`setting at least one depth parameter associated with said first mask, wherein said
`at least one depth parameter consists of at least one of luminance and saturation;
`applying said at least one depth parameter to said second image using said
`computer.
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`Proposed Substitute Claim 28
`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, wherein said at least one depth parameter consists of at
`least one of luminance and saturation;
`applying said at least one depth parameter to at least one non-composited image
`selected from said plurality of images using a computer;
`associating a first mask with a motion object selected from said set of motion
`object in a first image selected from the plurality of images;
`copying said first mask to create a second mask associated with a second image
`selected from the plurality of images;
`moving said second mask to location of said motion object in said second
`image;
`reshaping said second mask to fit said motion object in said second image using
`said computer;
`setting at least one motion object depth parameter associated with said first
`mask;
`applying said at least one motion object depth parameter to said second image
`using said computer.
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`As shown above, the only change to the independent claims (and the
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`dependent claims by virtue of their dependency) includes the addition of “wherein
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`said at least one depth parameter consists of at least one of luminance and
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`saturation” to the “setting at least one depth parameter…” step of the claims.
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`This narrowing limitation is explained below in view of what a person of ordinary
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`skill in the art at the time of the ’081 Patent (“POSITA”) would have understood.
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`A. Level of Ordinary Skill in the Art
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`For purposes of this proceeding and the analysis set forth below, a POSITA
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`in the field of the ’793 Patent as well as the ’081 and ’670 Patents at the time of the
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`invention would have had at least an undergraduate degree in electrical engineering
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`or computer science (or an equivalent subject) and would have been someone with
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`a good working knowledge of computer programming, data structures, and image
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`processing. In addition to the undergraduate degree, the person would have gained
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`this knowledge through several years of practical working experience. A higher
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`level of education or skill might make up for less experience, and vice-versa. Ex.
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`2024 at ¶ 21.
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`B. Claim Construction
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`Patent Owner contends that the broadest reasonable interpretation of “depth
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`parameter” in view of the ’081, the ’670, and the ’793 is a parameter used to create
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`a perceived depth of an object or region in an image. Ex. 2024 at ¶¶ 43-44.
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`None of the other added claim terms (i.e., luminance and saturation) require
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`construction and they should carry their ordinary and customary meaning as a
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`POSITA would understand them. Ex. 2024 at ¶ 37.
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`IV. The Substitute Claims meet the Requirements of 37 C.F.R. § 42.121
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`The proposed substitute claims detailed herein satisfy all the requirements of
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`37 C.F.R. §42.121. Specifically, the proposed substitute claims: (A) are supported
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`by the written description of the ’081 Patent and the ‘670 Patent, (B) respond to
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`each of the eight grounds of unpatentability involved in the trial (C) address the
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`patentability of the proposed substitute claims over the “prior art of record”, (D) do
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`not enlarge the scope of the claims or introduce new matter, and (E) provide a
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`reasonable number of substitute claims (i.e., on a one-to-one basis, or less). See 37
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`C.F.R. §§ 42.20(c), 42.121(a)-(b); see also, Idle Free Systems, Inc. v. Bergstrom,
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`Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative),
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`Corning Optical Commc’n RF, LLC, v. PPC Broadband, Inc., Case IPR2014-
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`00441 (PTAB Oct. 20, 2014) (Paper 19), and MasterImage 3D, Inc. v. RealD Inc.,
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`Case IPR2015-00040, slip op. 3 (PTAB July 15, 2015) (Paper 42) (precedential).
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`A. The Substitute Claims are Supported by the Written Description
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`of the ’670 Patent and the ’081 Patent
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`1.
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`Substitute Independent Claims
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`Proposed substitute independent claims 21, 27, and 28 recite verbatim every
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`limitation of original independent claims 1, 13, and 20 of the ’793, and only add a
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`narrowing limitation to the “setting at least one depth parameter…” step as detailed
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`above. See Section III, supra. With the exception of the “depth parameter”
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`limitation, there is no dispute between the parties that the remaining limitations of
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`the independent claims are supported by the original ’081 Patent or the ’670
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`Patent. Indeed, the Petitioner acknowledges that the ‘081 Patent and/or the ‘670
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`Patent disclose and support each such remaining limitation. See Petition, Sections
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`IV, VIII, and X (Paper 1). A discussion of §112, ¶ 1 support for those limitations
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`need not be repeated here.
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`The “depth parameter” limitation, however, is at the center of the dispute.
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`The discussion below demonstrates that the “depth parameter” is supported by the
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`original ’081 Patent as well as the ’670 Patent, and further explains how the
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`proposed substitute claims render that discussion moot by narrowing the claims to
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`only recite those parameters expressly taught in the ’081 Patent and ‘670 Patent.
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`Though Petitioner appears to equate “depth parameter” only with a numeric
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`distance, a POSITA reading the ’793 Patent would understand the term more
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`broadly than that, and recognize that “luminance” and “saturation” (as described in
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`the ’081 Patent) are also parameters that can be used to create a perceived depth of
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`an object in an image. Ex. 2024 at ¶ 39-51. Nevertheless, since a “numeric depth
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`value” is only inherently taught in the ’081 Patent and the ‘670 Patent, and
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`“luminance” and “saturation” are explicitly taught, Patent Owner’s proposed
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`amendments narrow the ‘793 Patent’s claims such that the species of “depth
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`parameters” claimed is limited to only those color-based depth parameters
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`expressly taught in the ’081 Patent and ‘670 Patent – namely “luminance” and
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`“saturation.” Ex. 2024 at ¶ 39-51. Support for these is reviewed below.
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`As noted above, a depth parameter is a parameter used to create a perceived
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`depth of an object or a region in an image. Ex. 2024 at ¶ 43. Luminance and
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`saturation are two such parameters, and it was well known at the time of the ’081
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`Patent that these parameters could be used to set or adjust a perceived depth of an
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`object or region in an image. Ex. 2024 at ¶ 39-51.
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`Support for “luminance” and “saturation” parameters is found in the ’081
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`Patent. See, e.g., Ex. 1003 at 9:1-26. For example, the ’081 Patent discloses that:
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`“Using an input device such as a mouse, the designer masks
`features in a selected single frame containing a plurality of
`pixels and assigns color to them using an HSL color space
`model based on creative considerations and the grayscale and
`luminance distribution underlying each mask.”
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`See Ex. 1003 at 9:1-14.
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`The “S” and “L” of the HSL color space model disclosed in the ’081 Patent
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`and the ’670 Patent refer to saturation and luminance, respectively. See Ex. 2024, ¶
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`37- 46. The HSL (Hue, Saturation, Luminance) color space is one of a number of
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`ways of defining color in a way that affects the perception of depth. Hue,
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`Saturation, and Lightness (sometimes Luminance) was one of the major color
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`spaces known at least as early as the time of the ’081 Patent. Ex. 2024 at ¶ 37; see
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`also, e.g., Ex. 2007 at pp. 1, 10; Ex. 2021 at p. 118:6-21 (testifying that lightness
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`and luminance are about the same). Saturation and luminance are parameters that
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`can be adjusted or set to create haze, shadow and other monoscopic depth cues that
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`create the perception of depth. Ex. 2024 at ¶ 39-48.
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`For instance, saturation – which generally refers to how pure or intense the
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`color appears – may be adjusted or set for a given region of an image to make it
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`appear more pale, soft, or washed out (e.g. making the region look hazy). Ex. 2024
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`at ¶ 37. And luminance – which generally refers to the perceived brightness of the
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`color – may be adjusted or set for a given region of an image to add shading or
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`shadow effects that create a perception of depth (e.g., making the region, or a
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`portion of the region appear to be in a shadow). Ex. 2024 at ¶ 37.
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`The HSL model was well known in the art and understood by POSITAs at
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`the time of the ‘081 Patent. Ex. 2024 at ¶ 37-51. Even absent other depth cues, it
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`was understood at the time of the ’081 Patent that shading (caused by variations in
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`luminance) could be used to convey a perception of depth. Ex. 2024 at ¶ 3. For
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`example, see the figure below, including the accompanying caption:
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`See Ex. 2010 at p. 3.
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`The ’081 Patent also teaches that objects in scenes can be classified into two
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`separate categories: stationary background elements and motion elements that
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`move through the scene. See Ex. 2024 at ¶ 46; Ex. 1003 at 1:55-59. Within each
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`of these categories, the ’081 Patent explains that a designer can assign color to a
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`plurality of pixels in a frame using an HSL color space model. Id.; Ex. 1003 at
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`9:4-6. The ’081 Patent notes that the designer can make this assignment “based on
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`creative considerations and the grayscale and luminance distribution underlying
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`each mask.” Ex. 1003:6-8 (emphasis added). The ’081 Patent goes on to explain
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`that “[s]ince the color applied to the feature extends the entire range of potential
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`grayscale values from dark to light the designer can insure that as the distribution
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`of the gray-scale values representing the pattern change homogenously into dark or
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`light regions within subsequent frames of the movie such as with the introduction
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`of shadows or bright light, the color for each feature also remains consistently
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`homogenous and correctly light or darken with the pattern upon which it is
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`applied.” Ex. 1003 at 9:17-26 (emphasis added); see also Ex. 2024 at ¶ 46.
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`That is, according to the ’081 Patent, the HSL values of the object, for
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`example the luminance, can be varied to account for the introduction of shadows or
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`bright light. Ex. 1003 at 9:17-26; See Ex. 2024 at ¶ 47. In this regard, the ’081
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`Patent also teaches that a background mask overlay can be created where the mask
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`overlay represents designer-selected “color lookup tables in which dynamic pixel
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`colors automatically compensate or adjust for moving shadows and other changes
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`in luminance.” Ex. 1003 at 3:47-51 (emphasis added); see also id. at 26:66-27:20,
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`40-49 (teaching that “assigned colors will automatically adjust according to
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`luminance and/or according to pre-selected color vectors compensating for changes
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`in the underlying gray scale density and luminance); see also Ex. 2024 at ¶ 47.
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`Conversely, without adjusting the HSL values of an object over which a shadow
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`falls, the object may appear not to be in the shadow. Ex. 2024 at ¶ 47; see also Ex.
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`2021 151:12-152:10. That is, the failure to compensate for shadows by adjusting
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`for luminance could disrupt the desired perceived depth ordering in the scene. Id.
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`A POSITA would have understood this at the time of the ’081 Patent, and would
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`have known that adjustments in the luminance could affect the perceived depth in a
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`way that made the image easier to comprehend. See Ex. 2024 at ¶ 37-51.
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`It was also understood at the time of the ’081 Patent that the distribution of
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`luminance (e.g., shadows) or saturation could be used as a depth cue to create
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`perceived relative depth or depth ordering. See Ex. 2024 at ¶ 37; see also Ex. 2022
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`at 6:17-28 (describing that “distant landscape elements may be made hazy or
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`bluish to indicate remoteness), 9:10-18 (describing different depths being assigned
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`to different aspects of a shaped object based on color/shape); Ex. 2005 at 35:35-37
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`(“The nature of 2D film-making is to create monoscopic depth cues such as haze,
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`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. 83-84
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`(using shading to create different perceived depths across a sphere).
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`Therefore, the ’081 Patent teaches that “luminance” and “saturation” are
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`parameters that may be used by an artist to create a perceived depth of an object or
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`region within an image (i.e., depth parameters). See Ex. 2024 at ¶ 37-51. Thus, the
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`amendment provided in the proposed substitute claims narrows the depth
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`parameter to these two types of depth parameters, “luminance” and “saturation,”
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`both of which find support in both the ’081 Patent and the ‘670 Patent. See id.
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`2.
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`Substitute Dependent Claims
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`Patent Owner proposes substitute dependent claims 22-26 corresponding to
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`original dependent claims 8-12. The substitute dependent claims are only amended
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`to reflect their new dependency from the proposed substitute independent claims,
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`and include no other revisions. The teachings of these dependent claims also find
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`§112, first paragraph support in the ’081 Patent as demonstrated by the verbatim
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`identical teaching in the ’081 Patent, which is illustrated in the side-by-side
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`comparison below. See Ex. 1003 at 29:47-30:7; Ex. 1001 at 35:28-36:45.
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`Claim 13 of the ‘081
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`Claim 8 of the ‘793
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`Substitute Claim 22
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`13. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`obtaining a camera angle
`value for said at least one
`image selected from said
`plurality of images.
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`8. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`obtaining a camera angle
`value for said at least one
`image selected from said
`plurality of images.
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`22. The method of claim
`21 wherein said obtaining
`a composite background
`further comprises:
`obtaining a camera angle
`value for said at least one
`image selected from said
`plurality of images.
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`Claim 14 of the ‘081
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`Claim 9 of the ‘793
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`Substitute Claim 23
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`14. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`obtaining a camera
`location value for said at
`least one image selected
`from said plurality of
`images.
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`9. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`obtaining a camera
`location value for said at
`least one image selected
`from said plurality of
`images.
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`23. The method of claim
`21 wherein said obtaining
`a composite background
`further comprises:
`obtaining a camera
`location value for said at
`least one image selected
`from said plurality of
`images.
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`Claim 15 of the ‘081
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`Claim 10 of the ‘793
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`Substitute Claim 24
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`15. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`estimating a camera focal
`length value for said at
`least one image.
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`10. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`estimating a camera focal
`length value for said at
`least one image.
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`24. The method of claim
`21 wherein said obtaining
`a composite background
`further comprises:
`estimating a camera focal
`length value for said at
`least one image.
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`Claim 16 of the ‘081
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`Claim 11 of the ‘793
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`Substitute Claim 25
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`16. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`estimating a zoom value
`for said at least one image.
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`11. The method of claim 1
`wherein said obtaining a
`composite background
`further comprises:
`estimating a zoom value
`for said at least one image.
`
`25. The method of claim
`21 wherein said obtaining
`a composite background
`further comprises:
`estimating a zoom value
`for said at least one image.
`
`Claim 20 of the ‘081
`
`Claim 12 of the ‘793
`
`Substitute Claim 26
`
`20. The method of claim 1
`further comprising:
`automatically separating
`said plurality of images at
`scene changes.
`
`
`12. The method of claim 1
`further comprising:
`automatically separating
`said plurality of images at
`scene changes.
`
`26. The method of claim
`21 further comprising:
`automatically separating
`said plurality of images at
`scene changes.
`
`Each of the proposed substitute dependent claims inherits the amended
`
`limitations from its respective independent claim as discussed above with respect
`
`to proposed substitute claim 21. See Section IV.A.1. The discussion above
`
`demonstrating support for the limitations in substitute claim 21 apply equally to
`
`substitute claims 27 and 28. Id. Accordingly, the proposed substitute dependent
`
`claims also find sufficient §112 first paragraph support in ’081 Patent.
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`B.
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`The Substitute Claims Respond To Each Ground in the Petition
`
`Each of Petitioner’s grounds rely on one or more of the following references,
`
`in various combinations (the filing date underlined in each instance):
`
`
`
`US Pat. No. 7,181,081 (“the ’081 Patent”), issued on February 20,
`
`2007 from an application filed on May 6, 2002 and claiming priority
`
`to an application (US App. No. 60/288,929) filed on May 4, 2001 (Ex.
`
`1003);
`
`
`
`US Pat. No. 7,333,670 (“the ’670 Patent”), issued February 19, 2008
`
`from an application filed on January 04, 2006 and claiming priority to
`
`a provisional application (US App. No. 60/288,929) filed on
`
`May 04, 2001 (Ex. 1004);
`
`
`
`US Pat. No. 7,573,475 (“Sullivan”), issued on August 11, 2009 from
`
`an application (US App. No. 11/446,576) filed on June 1, 2006 (Ex.
`
`1006);
`
`
`
`US Publ. No. US20100079246A1 (“Passmore”), published on April 1,
`
`2010 from an application (US App. No. 12/241,992) filed on
`
`September 30, 2008 (Ex. 1005).
`
`Because the proposed substitute claims of the ’793 properly claim priority to
`
`the ’670 Patent and the ’081 Patent, as discussed in Section III.A supra, these
`
`filings are not prior art to the proposed substitute claims. Moreover, with the
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`proposed substitute claims of the ’793 claiming the benefit of at least the May 6,
`
`2002 date, the Passmore and Sullivan references also fail to qualify as prior art
`
`under 35 U.S.C. §§ 102, 103 (Passmore and Sullivan were filed more than four
`
`years after the May 6, 2002 date).
`
`By securing a priority date at least as early as May 06, 2002, the amendment
`
`eliminates each and every reference relied upon in all eight grounds of Petitioner’s
`
`challenge. As such, the proposed amendment directly responds to and squarely
`
`renders each ground of Petitioner’s challenge moot.
`
`C. The Substitute Claims are Patentable Over the Prior Art
`
`The Substitute Claims are patentable over the prior art. First, the references
`
`relied upon in the Petition are not prior art to the substitute claims, as described in
`
`Section III.B supra. Second, no combination of any remaining prior art of record or
`
`prior art known to Patent Owner teaches or suggests the proposed claims’ subject
`
`matter.
`
`1.
`
`The References Relied upon in the Petitioner are not Prior Art
`
`to the Substitute Claims
`
`See Section III.B, supra.
`
`2.
`
`The Substitute Claims are Patentable Over the Prior Art of
`
`Record
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`Beyond the references relied upon in the Petition (disposed of in Section
`
`III.B, supra), the other “prior art of record” and including any other prior art
`
`known to Patent Owner further fails to teach or suggest each limitation in the
`
`proposed substitute claims. Below, Patent Owner discusses the known art closest
`
`to the features in the proposed substitute claims based on a review of the prior art in
`
`the original prosecution history of the ’793 patent, the ’670 patent, and the ’081
`
`patent, and other prior art known to Patent Owner. See MasterImage 3D, Inc. v.
`
`RealD Inc., IPR2015-00040, Paper 42, Order Conduct of the Proceedings at 2
`
`(PTAB July 15, 2015); Nike, Inc. v. Adidas AG, No. 2014-1719, slip op. at *39-40
`
`(Fed. Cir. Feb. 11, 2016). The references are not very close in concept or objective
`
`to the proposed substitute claims of the ’793 Patent, but nevertheless are the closest
`
`prior art of record known to the Patent Owner.
`
`Moed
`
`US Pat. No. 6,141,433 issued to Michael C. Moed on October 31, 2000
`
`(“Moed”) teaches a system and method for extracting regions from a video frame
`
`that represent objects of interest with respect to a background image for the scene.
`
`See Ex. 2025. The regions are set based upon differences between luminance
`
`information for a background image of the scene. See id. But unlike the
`
`composite background that is “obtained” in the claims of the ‘793 Patent, the
`
`technology in Moed presupposes that the luminance information about the
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`background of the scene is already known (i.e., the information from which to
`
`compute a “difference”). This is not “obtaining” a background image, and
`
`certainly cannot be said to be “obtaining a composite background” as taught and
`
`claimed in the ’793 Patent (in either the original or proposed substitute claims).
`
`Geshwind
`
`US Pat. No. 4,925,294 issued to Geshwind on May 15, 1990 (“Geshwind”)
`
`teaches a computer-assisted processing system and method that uses standard two-
`
`dimensional motion pictures to generate processed image sequences that exhibit
`
`some three-dimensional depth effects when viewed under appropriate conditions.
`
`See Ex. 2022. Though the patent is materially related to creating depth effects in
`
`images as between foreground and background elements (and in some instances
`
`based on illumination), Geshwind’s system is more particularly focused on
`
`parallax between scenes (as viewed by the left and right eyes) than adjusting depth
`
`parameters such as luminance and saturation to provide monoscopic depth cues (as
`
`in the substitute claims of the ‘793). See id. Indeed, though Geshwind is related to
`
`the ’793 by field, it fails to teach many of the limitations found in each of the
`
`substitute claims. For example, Geshwind does not include a teaching of
`
`“obtaining a composite background comprising a plurality of images wherein said
`
`composite background excludes a set of motion objects moving in relation to said
`
`common background elements” as required by claims 1 and 20 the ’793 Patent
`
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`(and corresponding substitute claims 21 and 28). Moreover, Geshwind does it
`
`include a teaching of “reshaping said second mask to fit said motion object in said
`
`second image using a computer” as taught by the ’793 Patent and claimed in claim
`
`13 (and corresponding substitute claim 27).
`
`Tanaka
`
`US Pat. No. 5,940,528 issued to Yoneta Tanaka on August 17, 1999
`
`(“Tanaka”) is relevant to claim 13 (and corresponding substitute claim 27), and is
`
`directed to a process for positioning of a mask relative to another mask, or masks
`
`relative to a workpiece. See Ex. 2026. However, while Tanaka teaches positioning
`
`a mask, it does not teach the “reshaping said second mask to fit said motion object
`
`in said second image using a computer” limitation of claim 13 (and corresponding
`
`substitute claim 27), among many other limitations. See id. Indeed, Tanaka is only
`
`peripherally related to the substitute claims presented herein for the ‘793 Patent.
`
`Upon review of the prior art of record, and considering other prior art known
`
`outside the record, Patent Owner is not aware of any prior art combinations that
`
`could be made to create a plausible invalidity challenge to the proposed substitute
`
`claims of the ‘79