UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`
`Prime Focus Creative Services Canada Inc.,
`
`Petitioner
`
`v.
`
`Legend3D, Inc.,
`
`Patent Owner
`___________
`
`U.S. Patent No. 7,907,793
`
`Issued: March 15, 2011
`
`Named Inventor: Barry Sandrew
`
`Title: IMAGE SEQUENCE DEPTH ENHANCEMENT SYSTEM AND
`METHOD
`___________
`
`DECLARATION OF DR. DAVID FORSYTH
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,907,793
`
`
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`PRIME FOCUS EX 1009-1
`PRIME FOCUS v LEGEND3D
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`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`
`Prime Focus Creative Services Canada Inc.,
`
`Petitioner
`
`v.
`
`Legend3D, Inc.,
`
`Patent Owner
`___________
`
`U.S. Patent No. 7,907,793
`
`Issued: March 15, 2011
`
`Named Inventor: Barry Sandrew
`
`Title: IMAGE SEQUENCE DEPTH ENHANCEMENT SYSTEM AND
`METHOD
`___________
`
`DECLARATION OF DR. DAVID FORSYTH
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,907,793
`
`
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`PRIME FOCUS EX 1009-1
`PRIME FOCUS v LEGEND3D
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`I.
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`INTRODUCTION
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`
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`1.
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`I have been asked by Prime Focus Creative Services Canada Inc.
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`(Petitioner) to provide my expert opinion in support of this petition for inter partes
`
`review (IPR) of U.S. Patent No. 7,907,793 (“the ‘793 Patent,” Ex. 1001).
`
`2.
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`I am a U.S. citizen over eighteen years of age. I am fully competent
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`to testify as to the matters addressed in this declaration. I currently hold the
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`opinions set forth in this declaration. It is my opinion that the prior art references
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`in the associated petition for IPR render all of the claims of the ‘793 Patent (i.e.,
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`Claims 1 through 20) obvious. My detailed opinion is set forth below.
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`3.
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`I am being compensated for my time by Petitioner at my standard rate
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`of $350 per hour (or $450 per hour of testimony if deposed). If work requires
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`travel, expenses are defrayed and I am compensated at my standard rate of $1000
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`for each 24 hours away from home, adjusted pro rata for shorter periods. This
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`compensation is not contingent upon my performance, the outcome of this matter,
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`or any issues involved in or related to this matter.
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`4.
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`I have no personal, commercial, or financial interest in Petitioner,
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`Patent Owner, or any other party related to this matter.
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`5.
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`I have considered all of the exhibits attached to this IPR petition in
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`forming my opinions.
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`6.
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`I have been asked to assume, for my analysis, that the claims of the
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`challenged ‘793 Patent have a priority date of August 17, 2009 (its filing date). To
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`the extent that Patent Owner argues for a different priority date, I reserve the right
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`to supplement my declaration to address those arguments.
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`7.
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`I am aware of information generally available to, and relied upon by,
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`persons of ordinary skill in the art at the relevant times, including technical
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`dictionaries and technical reference materials (including, for example, textbooks,
`
`manuals, technical papers, articles, and relevant technical standards).
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`8.
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`I understand that, due to procedural limitations for IPR proceedings,
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`the grounds of invalidity discussed herein are based solely on prior art patents and
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`other printed publications. I understand that Petitioner reserves all rights to assert
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`at a later time other grounds for invalidity not addressed herein, for instance failure
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`of the application to claim patentable subject matter under 35 U.S.C. § 101, failure
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`to meet requirements under 35 U.S.C. § 112 (e.g., lack of written description in
`
`support of the claims), and anticipation or obviousness under 35 U.S.C. §§ 102 and
`
`103 not based solely on patents and printed publications (e.g., evidence of prior
`
`use). Thus, the absence of discussion of such matters here should not be
`
`interpreted as indicating that there are no such additional grounds for invalidity of
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`the ‘793 Patent. Similarly, absence of discussion of other printed prior art
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`references here should not be interpreted as indicating that there are no other
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`printed prior art references that either anticipate or render obvious the ‘793 Patent.
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`9.
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`I reserve the right to supplement my opinions to address any
`
`information obtained, or positions taken, based on any new information that comes
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`to light throughout this proceeding.
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`II. BACKGROUND
`
`10.
`
`I am currently the Fulton-Watson-Copp Professor of Computer
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`Science at the University of Illinois at Urbana-Champaign. My curriculum vitae is
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`attached to the associated petition for IPR as Exhibit 1008. I believe that my
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`background and expertise qualify me as an expert in the technical issues in this
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`matter.
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`11. My education began in Cape Town, South Africa. I was an
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`undergraduate at the University of the Witwatersrand, Johannesburg, and I hold a
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`Bachelor of Science (1984) and Master of Science in Electrical Engineering from
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`that University. I was awarded the Diocesan College Rhodes Scholarship in 1984
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`to attend Oxford University. I hold a Master of Arts by special election from
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`Oxford University and a Doctorate of Philosophy in Engineering Science from
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`Balliol College, Oxford. I was appointed Fellow by Examination of Magdalen
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`College, Oxford in 1989. I was then appointed Assistant Professor of Computer
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`Science at the University of Iowa in 1991; in 1994, I was promoted to Associate
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`Professor of Computer Science, and went on leave of absence to take up an
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`appointment as Assistant Professor of Computer Science at U.C. Berkeley. I was
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`promoted to Associate Professor of Computer Science at U.C. Berkeley in 1996,
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`and to Professor of Computer Science in 2002. I went on leave of absence from
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`U.C. Berkeley to take up an appointment as Professor of Computer Science at the
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`University of Illinois at Urbana-Champaign in 2004. I am currently the Fulton-
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`Watson-Copp Professor of Computer Science at the University of Illinois at
`
`Urbana-Champaign.
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`12.
`
`I have studied Computer Vision since my final year as an
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`undergraduate in 1984, when I engaged in an undergraduate project on the topic.
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`My Ph.D. thesis treats a traditional problem in computer vision, known as “color
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`constancy,” and the paper that resulted from this work is still quite regularly cited.
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`As a Fellow by Examination, I studied illumination and shading effects in vision,
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`and geometric methods to recognize objects. I have published papers on a wide
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`range of topics in computer vision, computer graphics, machine learning and
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`human-computer interfaces. I have published about 160 refereed papers and 10
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`book chapters. I have published one textbook in two editions and four languages,
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`and one research monograph. I have edited six volumes of collected papers. A
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`reasonably complete list of my publications is contained in my curriculum vitae in
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`Appendix A.
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`13.
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`In addition, I have occupied various leadership posts within my
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`discipline. I was program co-chair for the Institute of Electrical and Electronics
`
`Engineers (“IEEE”) Conference on Computer Vision and Pattern Recognition
`
`(“CVPR”) in 2000 and 2011, and for the European Conference on Computer
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`Vision (“ECCV”) in 2008. I was general co-chair for the CVPR in 2006 and again
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`hold the position for CVPR 2015. I am an Associate Editor of the International
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`Journal of Computer Vision; of the Association for Computing Machinery
`
`(“ACM”) Transactions on Graphics; and of the Journal of the ACM. I am the
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`Editor in Chief of the IEEE Transactions on Pattern Analysis and Machine
`
`Intelligence (“TPAMI”), a journal which receives approximately 1000 submissions
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`per year, and which is usually seen as the leading journal in the discipline. I also
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`served for three years on a committee of the National Research Council, convened
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`to study methods to protect children from pornography and other inappropriate
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`material on the internet.
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`14. Throughout my career I have received a variety of awards. In 1993,
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`the Marr prize for Best Paper at the International Conference on Computer Vision
`
`was awarded to “Extracting Projective Structure from Single Perspective Views of
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`3D Point Sets,” a paper I wrote with Charles A. Rothwell, Andrew Zisserman, and
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`Joseph L. Mundy. In 2002, the award for Best Paper in Cognitive Computer
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`Vision at the European Conference in Computer Vision was awarded to “Object
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`recognition as machine translation: Learning a lexicon for a fixed image
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`vocabulary,” a paper I wrote with P. Duygulu, K. Barnard, and J.F.G. de Freitas. I
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`was awarded an IEEE Technical Achievement Award in 2005 for my work on
`
`Computer Vision. I became an IEEE Fellow in 2009, and an ACM Fellow in
`
`2014.
`
`15. My work is extensively cited in computer vision literature, with
`
`23,312 citations recorded by Google scholar on June 1, 2016.
`
`16.
`
`I have made extensive contributions to computer vision education. I
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`am lead co-author of a widely used textbook in the discipline, “Computer Vision -
`
`A Modern Approach”, which has appeared in two editions and four languages. I
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`have trained 24 Ph.D. students. I have trained people who are very well known
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`academics in computer vision. Tamara Berg is associate professor of computer
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`science at the University of North Carolina at Chapel Hill. Ali Farhadi is assistant
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`professor of computer science at the University of Washington. Deva Ramanan is
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`associate professor of computer science at the University of California at Irvine,
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`and is moving to take up a tenured post at Carnegie Mellon University. Gang
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`Wang is assistant professor of computer science at Nanyang Technological
`
`University in Singapore. Kobus Barnard is professor of computer science at
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`University of Arizona. Each is seen as a young leader in the field.
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`17. Based on my above-described 30 years of experience in the field of
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`computer vision and the acceptance of my publications and professional
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`recognition by societies in my field, I believe that I am considered to be an expert
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`in the field of computer vision (including image analysis) and its application to
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`human-computer interfaces (including image enhancement).
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`I.
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`LEGAL STANDARDS
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`18.
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`I am not a patent attorney and my opinions are limited to what I
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`believe a person of ordinary skill in the art would have understood. I use the
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`principles below, however, as a guide in formulating my opinions.
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`19. My understanding is that a primary step in determining the validity of
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`patent claims is to properly construe the claims to determine claim scope and
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`meaning.
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`20.
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`In an IPR proceeding, I understand that claims are to be given their
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`broadest reasonable construction in light of the patent’s specification. 37 C.F.R. §
`
`42.100(b). For the purposes of this IPR, I have construed each claim term in
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`accordance with its plain and ordinary meaning under the required broadest
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`reasonable construction. In other forums, such as in federal courts, different
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`standards of proof and claim interpretation control, which are not applied by the
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`patent office for IPR. Accordingly, I reserve the right to argue for a different
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`interpretation or construction of the challenged claims in other proceedings, as
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`appropriate. For the purposes of this IPR, however, my opinions on invalidity
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`would not change regardless of what standard for claim construction is applied by
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`the Patent Trial and Appeal Board (PTAB).
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`21.
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`It is my understanding that a claim is anticipated under 35 U.S.C. §
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`102 if each and every element and limitation of the claim is found either expressly
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`or inherently in a single prior art reference. I understand that anticipation is a
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`question of fact. I further understand that the requirement of strict identity
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`between the claim and the reference is not met if a single element or limitation
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`required by the claim is missing from the applied reference.
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`22.
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`It is my understanding that a claim is unpatentable under 35 U.S.C. §
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`103 if the claimed subject matter as a whole would have been obvious to a person
`
`of ordinary skill in the art at the time of the alleged invention. I understand that
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`obviousness is a question of law based on underlying factual issues. I also
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`understand that an obviousness analysis takes into account the scope and content of
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`the prior art, the differences between the claimed subject matter and the prior art,
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`the level of ordinary skill in the art at the time of the invention, and the existence
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`of secondary considerations such as commercial success or long-felt but
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`unresolved needs.
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`23.
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`In determining the scope and content of the prior art, it is my
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`understanding that a reference is considered appropriate prior art if it falls within
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`the field of the inventor’s endeavor. In addition, I understand that a reference is
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`prior art if it is reasonably pertinent to the particular problem with which the
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`inventor was involved. A reference is reasonably pertinent if it logically would
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`have commended itself to an inventor’s attention in considering his problem. If a
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`reference relates to the same problem as the claimed invention, that supports the
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`use of the reference as prior art in an obviousness analysis.
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`24. To assess the differences between prior art and the claimed subject
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`matter, it is my understanding that 35 U.S.C. § 103 requires the claimed invention
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`to be considered as a whole. This “as a whole” assessment requires showing that
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`one of ordinary skill in the art at the time of invention, confronted by the same
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`problems as the inventor and with no knowledge of the claimed invention, would
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`have selected the elements from the prior art and combined them in the claimed
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`manner.
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`25.
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`It is my further understanding that the Supreme Court has recognized
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`several rationales for combining references or modifying a reference to show
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`obviousness of claimed subject matter. Some of these rationales include:
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`combining prior art elements according to known methods to yield predictable
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`results; simple substitution of one known element for another to obtain predictable
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`results; use of a known technique to improve similar devices (methods or products)
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`in the same way; applying a known technique to a known device (method or
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`product) ready for improvement to yield predictable results; choosing from a finite
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`number of identified, predictable solutions, with a reasonable expectation of
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`success; known work in one field of endeavor prompting variations of it for use in
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`either the same field or a different one based on design incentives or other market
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`forces if the variations are predictable to one of ordinary skill in the art; and some
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`teaching, suggestion, or motivation in the prior art that would have led one of
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`ordinary skill to modify the prior art reference or to combine prior art reference
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`teachings to arrive at the claimed invention.
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`26.
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`It is further my understanding that a proper obviousness analysis
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`focuses on what was known or obvious to a person of ordinary skill in the art, not
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`just the patentee. Accordingly, I understand that any need or problem known in
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`the field of endeavor at the time of invention and addressed by the patent can
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`provide a reason for combining the elements in the manner claimed.
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`27.
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`I understand that a claim can be obvious in light of a single reference,
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`without the need to combine references, if the elements of the claim that are not
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`found explicitly or inherently in the reference can be supplied by the common
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`sense of one of skill in the art.
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`28.
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`I understand that secondary indicia of non-obviousness may include:
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`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
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`the patent; (2) commercial success of processes covered by or products made by
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`the patent; (3) unexpected results achieved by the invention; (4) praise of the
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`invention by others skilled in the art; (5) licensing of the patent by others; (6)
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`deliberate copying of the invention; (7) failure of others to find a solution to the
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`long felt need; and (8) skepticism by experts. I also understand that there must be
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`a relationship between any such secondary considerations and the invention. I
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`further understand that contemporaneous and independent invention by others is a
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`secondary consideration supporting an obviousness determination.
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`29.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a person of ordinary skill in the art having the understanding and
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`knowledge reflected in the prior art and motivated by the general problem facing
`
`the inventor would have been led to make the combination of elements recited in
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`the claims. Under this analysis, the prior art references themselves, or any need or
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`problem known in the field of endeavor at the time of the invention, can provide a
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`reason for combining the elements of multiple prior art references in the claimed
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`manner.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`30.
`
`It is my understanding that the ‘793 Patent should be interpreted based
`
`on how it would be read by a person of ordinary skill in the art at the time of the
`
`effective filing date of the application. It is my understanding that factors such as
`
`the education level of those working in the field, the sophistication of the
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`technology, the types of problems encountered in the art, the prior art solutions to
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`those problems, and the speed at which innovations are made may help establish
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`the level of skill in the art.
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`31.
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`I am familiar with the technology at issue and the state of the art at the
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`earliest priority date of the ‘793 Patent, August 17, 2009.
`
`32.
`
`It is my opinion, based upon a review of the ‘793 Patent and my
`
`knowledge of the field of the art, that a person of ordinary skill in the art with
`
`respect to the ‘793 patent at the time of the alleged invention would generally have
`
`had at least a Bachelor’s degree education or equivalent and seven or more years of
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`relevant work experience in the area of image analysis or image enhancement.
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`Higher education may substitute for less work experience and vice versa. For
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`example, if an academic, a person of ordinary skill in the art at the time of the
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`alleged invention would have had a PhD in a field related to computer image
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`analysis or image enhancement and several years of relevant research.
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`33.
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`I consider myself to have at least such ordinary skill in the art with
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`respect to the subject matter of the ‘793 Patent at the time of the effective filing
`
`date.
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`34.
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`I have considered the issues discussed in the remainder of this
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`declaration from this perspective of a person of ordinary skill in the art. Although
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`I use this perspective, I do not believe that any of my opinions would change if a
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`higher or lower level of skill were assumed.
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`IV. OVERVIEW OF THE ‘793 PATENT
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`35. The ‘793 Patent is directed to making production of stereoscopic
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`movies more efficient. Stereopsis is an effect where human observers perceive
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`depth when the image presented to the left eye is slightly different from the image
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`presented to the right eye. If only one image is available, a second image must be
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`created. A visual effects artist can begin the conversion process of a single image
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`into a pair of stereoscopic images by determining the depth of each object in a
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`frame relative to the camera. For example, in a frame of a horse jumping presented
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`in the association Petition, the visual artist could begin by deciding that the horse is
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`10 feet away and that the background is 100 feet away; a computer can then use
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`that information to compute a second view. The shot will be composed of a
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`sequence of frames and the artist must ensure that the depths are consistent
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`throughout the shot. The technologies of the ‘793 Patent reduce the artist’s
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`workload by helping with the initial determination of the depth of objects in an
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`image sequence. See Ex. 1001, ‘793 Patent at col. 1 l. 21-25. Furthermore, the
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`technologies of the ‘793 Patent help to propagate the choices an artist has made to
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`future frames in the image sequence.
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`36.
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`In one embodiment of the ‘793 Patent, the process begins by
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`recognizing that all of these images are a single sequence and contain common
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`foreground (horse) and background (barn, etc.) elements. See Ex. 1001, ‘793
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`Patent at col. 34 l. 60-61. As foreground objects move, portions of the background
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`that were previously occluded become visible. The result is that a composite
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`background image can be reconstructed that excludes the motion object in the
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`foreground (the horse). See id. at col. 34 l. 62-65. The process of the ‘793 Patent
`
`then sets the depth for one of the regions in the composite background (say, the
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`barn in the background might be 100 feet away). See id. at col. 34 l. 66-67.
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`37. The motion objects in the foreground are managed by creating a
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`“mask” of the object. See id. at col. 35 l. 48-49. The mask is then copied to the
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`next frame in the sequence and moved and reshaped so that it fits the same motion
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`object in the next frame, and so on. See id. at col. 35 l. 50 – col. 36 l. 1-2. The
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`visual artist then decides the depth of the motion object in the first frame (e.g., the
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`horse is 10 feet away) and that depth is applied to the motion object in the second
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`and further frames. See id. at col. 36 l. 3-6.
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`38. The sequence is then reconstructed from the composite background
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`and the foreground object or objects. See id. at col. 35 l. 1-3. This approach helps
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`ensure consistency across the scene so that the barn always appears to be 100 feet
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`away and the horse always appears to be 10 feet away.
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`V. THE PRIOR ART
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`A. The ‘670 and ‘081 Patents
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`39. The ‘081 Patent and ‘670 Patents both claim a “color” parameter,
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`whereas the ‘793 Patent claims a “depth” parameter. “Color” and “depth”
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`parameters are very different. A “color” parameter relates to the visible hue,
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`saturation or lightness of an object while a “depth” parameter relates to the
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`perceived distance of an object from the camera. These concepts are entirely
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`distinct and do not really overlap.
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`40. The ‘081 and ‘670 Patents relate to colorization. Neither the ‘081
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`Patent nor the ‘670 Patents discuss “depth” (other than to mention the “bit depth”
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`to which a film is digitized), nor do they discuss 3D conversion more generally.
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`Without any discussion whatsoever about depth or 3D conversion, a person of
`
`ordinary skill in the art could not possibly have recognized that the inventor of the
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`‘081 Patent or ‘670 Patent had possession of the depth-related invention of the
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`‘793 Patent when those older patents were filed. Since “color” and “depth” are
`
`distinct concepts, as discussed above, nothing in the disclosures of the ‘081 or ‘670
`
`Patents would have indicated to a person of ordinary skill in the art to think about
`
`depth or 3D conversion when reading those patents.
`
`41. Comparing the specifications of the ‘081, ‘670, and ‘793 Patents, it
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`can be seen that a substantial amount of new information was added going from
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`the older ‘081 and ‘670 Patents to the ‘793 Patent. See Exs. 1014 and 1015. This
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`new information actually teaches how to use the method of the ‘793 Patent for
`
`purposes of 3D conversion. Only after all of this new matter related to 3D
`
`conversion was added could a person of ordinary skill the art recognize that the
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`inventor had possession of the depth-related invention claimed in the ‘793 Patent.
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`42.
`
`I understand that, since the ‘793 Patent cannot claim priority to the
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`‘081 Patent or the ‘670 Patent, both the ‘081 Patent and the ‘670 Patent qualify at
`
`least as pre-AIA 35 U.S.C. § 102(b) prior art against the ‘793 patent.
`
`B. U.S. Patent No. 7,573,475
`(“Sullivan”) and U.S. Patent
`Application No. 12/341,992 (“Passmore”)
`
`43. There are several approaches to converting a single 2D image into a
`
`pair of complementary images that appear 3D. One such method is to rebuild the
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`3D geometry of a scene with a computer, project the original image onto it, and
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`render the two different points of view. U.S. Patent No. 7,573,475 to Sullivan
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`(“Sullivan”) embodies such a technique. I understand that Sullivan qualifies at
`
`least as pre-AIA 35 U.S.C. § 102(b) prior art against the ‘793 patent.
`
`44. Another method of 3D conversion involves shifting pixels
`
`horizontally. A visual artist can simply slide pixels left and right within an image
`
`so that an object appears as it would to each eye if the object were at a particular
`
`distance from the viewer. U.S. Patent Application No. 12/341,992 (“Passmore”)
`
`
`
`16
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`PRIME FOCUS EX 1009-17
`PRIME FOCUS v LEGEND3D
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`
`
`
`embodies one such approach. I understand that Passmore qualifies at least as pre-
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`AIA 35 U.S.C. § 102(e) prior art against the ‘793 patent.
`
`C. Combining/Modifying References
`
`45. There is substantial motivation to combine/modify the ‘081 Patent
`
`with Passmore or Sullivan, the ‘670 Patent with Passmore or Sullivan, the ‘081
`
`Patent with the ‘670 Patent and Passmore, and the ‘081 Patent with the ‘670 Patent
`
`and Sullivan.
`
`46. All of these publications are in the same field of endeavor—image
`
`analysis and image enhancement. The ‘793 Patent expressly states as such:
`
`“related to the field of image analysis and image enhancement.” See Ex. 1001,
`
`‘793 Patent at col. 1 l. 19-21. The ‘793 Patent therefore admits that it falls within
`
`the same field of endeavor as the ‘081 and ‘670 Patents based on their patent
`
`classification. The ‘793 Patent is also clearly within the same field of endeavor as
`
`Passmore and Sullivan since they all teach methods of 3D conversion. All of these
`
`references may therefore be considered analogous art because they are all within
`
`the same field of endeavor.
`
`47. The teachings of the ‘081 and ‘670 Patents are extremely pertinent to
`
`the particular problem addressed in the ‘793 Patent. The ‘793 Patent shares the
`
`majority of its disclosure with the ‘081 and ‘670 Patents, acknowledging that the
`
`older patents are pertinent to the ‘793 Patent. Passmore and Sullivan, which teach
`
`
`
`17
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`PRIME FOCUS EX 1009-18
`PRIME FOCUS v LEGEND3D
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`
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`how to convert images into 3D, are also clearly pertinent to the particular problem
`
`with which the inventor of the ‘793 Patent was involved because they all relate to
`
`the same problem—3D conversion. Again, all of these references may be
`
`considered analogous art because they are all pertinent to the particular problem
`
`addressed by the inventor of the ‘793 Patent.
`
`48. The Passmore and Sullivan prior art references contain teachings,
`
`suggestions, and motivations that would have led one of ordinary skill in the art to
`
`modify either or both the ‘670 or ‘081 Patents to arrive at the challenged ‘793
`
`Patent. For example, Passmore states:
`
`Embodiments of the [3D-related] invention may use pre-
`existing digital masks that exist for movies. One such
`source of digital masks is movies that have been
`colorized. Colorized movies generally utilize digital
`masks that are either raster or vector based areas that
`define portions of a movie where a palette of color is to
`be applied. As these masks generally define human
`observable objects that also are associated by the human
`mind at a given depth, these masks may be utilized by
`embodiments of the invention to augment the depth of an
`image. The enormous effort of generating masks for an
`entire movie may thus be leveraged.
`
`Ex. 1005, Passmore at ¶ 48. These strong market forces—i.e., the benefit in
`
`leveraging substantial amounts of previous manual labor—would have prompted
`
`the variation of the methods of the ‘670 and ‘081 Patents (which would have
`
`produced a large number of masks during the colorization process) for use in 3D
`
`conversion with predictable results. All that is required is the simple substitution
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`
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`18
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`PRIME FOCUS EX 1009-19
`PRIME FOCUS v LEGEND3D
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`of one known element from Passmore or Sullivan—depth—for another element
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`from the ‘670 or ‘081 Patents—color—to obtain predictable results.
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`49.
`
`I am familiar with Business Wire as a periodical that publishes press
`
`releases. Business Wire is a reliable authority with respect to press release news
`
`about individual companies. To the extent that I am interested in learning about a
`
`development at a particular company in my field, the press releases published by
`
`Business Wire are potentially one suitable source for such information. I am
`
`informed that Business Wire published a press release in 2008 wherein Barry
`
`Sandrew, the sole inventor of the ‘081, ‘670, and ‘793 Patents, stated: “The process
`
`of converting existing 2D feature films and television episodes into 3D content is a
`
`logical extension of Legend[3D]’s ground-breaking digital colorization process.”
`
`Ex. 1007 at p. 3. Mr. Sandrew’s statement shows that there was a well-known
`
`motivation to leverage the colorization processes of the ‘081 and ‘670 Patents for
`
`the purposes of 3D conversion. Mr. Sandrew’s statement therefore further
`
`supports my own opinion that the pivot from the colorization methods found in the
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`‘081 and ‘670 patents to the 3D conversion methods found in the ‘793 Patent
`
`would have been obvious at the time the ‘793 Patent was filed.
`
`19
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`PRIME FOCUS EX 1009-20
`PRIME FOCUS v LEGEND3D
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`VI. GROUND 1: CLAIMS 1, 2, AND 7 THROUGH 12 ARE OBVIOUS
`OVER THE ‘081 PATENT IN VIEW OF PASSMORE.
`
`A. Claim 1
`
`50. Comparing Claim 1 of the ‘081 Patent to Claim 1 of the ‘793 Patent, it
`
`can be seen that there are only two differences. First, Claim 1 of the challenged
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`‘793 Patent expressly claims “using a computer” to perform the final step of the
`
`process. The process of the ‘081 Patent, however, is described throughout as being
`
`performed using a computer and it would be entirely impractical (if even possible)
`
`to carry out the process otherwise. See, e.g., Ex. 1003, ‘081 Patent at Abstract
`
`(“computer controlled application of masks”). The ‘081 Patent therefore discloses
`
`the limitation of “using a computer” to apply depth parameters.
`
`51. The only other difference between Claims 1 of the ‘081 and ‘670
`
`Patent is that the ‘081 Patent claims setting a “color” parameter instead of a
`
`“depth” parameter.
`
`52. Claim 1 of the ‘081 Patent (and also Claim 1 of ‘793 Patent) recites:
`
`“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 . . . .” The specification of the
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`‘081 Patent makes it clear that this composite background is itself an image:
`
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`20
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`PRIME FOCUS EX 1009-21
`PRIME FOCUS v LEGEND3D
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`“Stationary foreground and background elements in a plurality of sequential
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`images comprising a camera pan are combined and fitted together using a
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`series of phase correlation, image fitting and focal length estimation
`
`techniques to create a composite single frame that represents the series of
`
`images used in its construction. During the process of this construction the
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`motion elements are removed through operator adjusted global placement of
`
`overlapping sequential frames.
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`The single background image representing the series of camera pan images
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`is color designed using multiple color transform look up tables limited only
`
`by the number of pixels in the display. This allows the designer to include as
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`much detail as desired including air brushing of mask information and other
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`mask application techniques that provide maximum creative expression.
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`Once the background color design is completed the mask information is
`
`transferred automatically to all the frames that were used to create the single
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`composited image.” ‘081 Patent at col. 2 l. 40-58.
`
`Similarly, the ‘081 Patent later states:
`
`“All frames in the scene are then processed automatically to create
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