`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
`IPR2016-01243
`___________
`
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I. 
`
`THE MOTION TO AMEND IS PROCEDURALLY DEFECTIVE ........... 1 
`
`A. 
`
`B. 
`
`C. 
`
`Legend should not be allowed to amend a patent that was
`procured by inequitable conduct. ....................................................... 1 
`
`The amended claims constitute double patenting. ............................. 1 
`
`Legend did not adequately analyze the prior art. ............................... 2 
`
`i. 
`
`ii. 
`
`iii. 
`
`iv. 
`
`v. 
`
`Legend did not consider prior art of record Sandrew. ............. 2 
`
`Legend did not consider known prior art Burt. ........................ 6 
`
`Legend did not consider other known prior art. ...................... 8 
`
`Legend did not adequately analyze the added
`limitation in the context of the prior art. ................................ 10 
`
`Conclusion regarding Legend’s failure to consider the
`known prior art. ...................................................................... 10 
`
`II. 
`
`THE AMENDED CLAIMS ARE NOT PATENTABLY
`DISTINCT .................................................................................................. 11 
`
`A.  All amended claims are anticipated by the ‘081 and ‘670
`Patents............................................................................................... 11 
`
`B. 
`
`C. 
`
`Amended claim 21 is anticipated by Burt and is also obvious
`over Burt in view of Irani ‘96. .......................................................... 12 
`
`Amended claim 21 is anticipated by and obvious over
`Odone. .............................................................................................. 13 
`
`D.  Amended claims 22-25 are obvious over Odone in view of
`Szeliski. ............................................................................................ 15 
`
`i. 
`
`Motivation to Combine .......................................................... 15 
`
`10154211.27 05
`
`
`- i -
`
`
`
`

`

`Page
`
`ii. 
`
`iii. 
`
`iv. 
`
`v. 
`
`Proposed Amended Claim 22 ................................................ 17 
`
`Proposed Amended Claim 23 ................................................ 17 
`
`Proposed Amended Claim 24 ................................................ 18 
`
`Proposed Amended Claim 25 ................................................ 18 
`
`E. 
`
`Amended claims 22 and 25 are obvious over Odone in view
`Nielsen. ............................................................................................. 18 
`
`F. 
`
`Amended claim 26 is obvious over Odone in view Irani ‘98. ......... 19 
`
`G.  Amended claim 27 is anticipated by and obvious over
`Sandrew. ........................................................................................... 20 
`
`H.  Amended claims 21 and 23 are anticipated by and obvious
`over Irani ’96. ................................................................................... 20 
`
`I. 
`
`J. 
`
`Amended claims 22-25 are obvious over Irani ’96 in view of
`Szeliski. ............................................................................................ 22 
`
`Amended claim 26 is obvious over Irani ’96 in view of Irani
`’98. .................................................................................................... 23 
`
`K.  Amended claim 28 is obvious over Odone in view of
`Sandrew. ........................................................................................... 23 
`
`L. 
`
`Amended claim 28 is obvious over Irani ‘96 in view of
`Sandrew. ........................................................................................... 24 
`
`
`
`10154211.27 05
`
`
`- ii -
`
`
`
`

`

`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Corning Optical Commc’n RF, LLC, v. PPC Broadband, Inc.,
`Case IPR2014-00441 (PTAB Oct. 20, 2014) ............................................... 10
`
`Encyclopaedia Britannica, Inc. v. Alpine Electronics of America,
`Inc.,
`609 F.3d 1345 (Fed. Cir. 2010) .................................................................... 11
`
`Woodbolt Distribution, LLC v. Natural Alternatives International,
`Inc.,
`Appeal No. 2015-000225, 2015 WL 4455026 (PTAB July 17,
`2015) ............................................................................................................. 12
`
`Other Authorities
`
`37 C.F.R. § 42.11 ................................................................................................. 2
`
`37 C.F.R. § 42.12 ................................................................................................. 1
`
`MPEP § 1122 III ................................................................................................ 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`

`

`
`
`Exhibit Description
`
`
`EXHIBIT LIST
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`
`
`U.S. Patent No. 7,907,793 (“the ‘793 Patent”)
`
`File History for the ‘793 Patent
`
`U.S. Patent No. 7,181,081 (“the ‘081 Patent”)
`
`U.S. Patent No. 7,333,670 (“the ‘670 Patent”)
`
`U.S. Patent Application No. 12/241,992 (“Passmore”)
`
`U.S. Patent No. 7,573,475 (“Sullivan”)
`
`Declaration of Rob S. Schmitt from Business Wire, Inc. attaching:
`
` Exhibit 1: “Legend Films Successfully Raise $5 Million in
`Venture Capital Funding” (press release)
`
` Exhibit 2: “‘Night of the Living Dead’ to Be Released in Color
`and 3D” (press release)
`
`Curriculum Vitae of Dr. David Forsyth
`
`CORRECTED DECLARATION of David Forsyth, Ph.D.
`
`U.S. Patent No. 7,577,312
`Article: “How do 3D firms work?” available at
`http//www.physics.org/article-questions.asp?id=56
`
`Book excerpt: Rendering Techniques 2001, edited by Steven J. Gortler
`and Karol Myszkowski (2001)
`Article: Matt Sullivan, “Trick and Treat: Behind the Scenes of the New
`Nightmare Before Christmas and the 3D Movie Revolution,” Popular
`Mechanics, available at
`http://www.popularmechanics.com/technology/gadgets/a3607/4200796/.
`
`Redline of specification from '081 Patent to '793 Patent
`
`Redline of specification from '670 Patent to '793 Patent
`
`iv
`
`

`

`
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`
`
`Declaration of Jonathan Kagan in Support of Prime Focus Creative
`Services Canada Inc.'s Unopposed Motion for Pro Hac Vice Admission
`
`U.S. Patent No. 8,488,868
`
`Liang Zhang & Wa James Tam, Stereoscopic Image Generation Based
`on Depth Images for 3D TV, 51 IEEE Transactions on Broadcasting 191
`(2005)
`
`Color Figures for U.S. Patent No. 9,286,941 (previously filed by Patent
`Owner as Exhibit 2003 in IPR2016-01491)
`
`U.S. Patent No. 8,897,596
`
`File History for Ex. 1005, U.S. Patent Application No. 12/241,992
`(“Passmore”)
`
`Georgia Superior Court Complaint by N4D, LLC against Charles
`Gregory Passmore a/k/a Greg Passmore, et al. (filed as Docket No. 28-5
`in N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-02656-BEN-NLS
`(S.D. Cal. Jan. 31, 2014))
`
`Declaration Authenticating Exs. 1022, 1027, and 1028 (filed as Docket
`No. 28-3 in N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-02656-
`BEN-NLS (S.D. Cal. Jan. 31, 2014))
`
`Complaint by N4D, LLC against Legend3D, Inc., et al. (Docket No. 9,
`Case No. 3:13-cv-02656-BEN-NLS (S.D. Cal. Nov. 26, 2013))
`
`Article: “Master of conversions: Legend3D’s Barry Sandrew goes
`deep,” Film Journal International, available at
`http://www.filmjournal.com/content/master-conversions-
`legend3d%E2%80%99s-barry-sandrew-goes-deep, including
`authenticating declaration
`
`Docket No. 20-1, N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-
`02656-BEN-NLS (S.D. Cal. Jan. 13, 2014)
`
`Docket No. 28-6, N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-
`02656-BEN-NLS (S.D. Cal. Jan. 31, 2014)
`
`Docket No. 28-4, N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-
`02656-BEN-NLS (S.D. Cal. Jan. 31, 2014)
`
`v
`
`

`

`
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`
`
`Docket No. 42, N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-02656-
`BEN-NLS (S.D. Cal. Aug. 11, 2014)
`
`Deposition Transcript of Carlos Vazquez (4/6/2017) in IPR2016-00806
`
`U.S. Patent No. 9,286,941
`
`U.S. Patent No. 4,984,072 (“Sandrew”)
`
`U.S. Patent No. 5,649,032 (“Burt”)
`
`1034 Michal Irani et al., “Efficient Representations of Video Sequences and
`Their Applications,” 8 Signal Processing: Image Communication 327
`(1996), attaching purchase receipt (“Irani ‘96”)
`
`1035
`
`1036
`
`Higher resolution figures taken from:
`http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.53.4382&rep=rep1&type=pdf
`
`7/6/2016 Non-Final Rejection of U.S. Patent No. 9,286,941 (Ex. 1031)
`
`Francesca Odone et al., “Robust Motion Segmentation for Content-
`based Video Coding,” 1 RIAO2000 Content-based Multimedia
`Information Access 594 (2000), attaching purchase receipt (“Odone”)
`
`Higher resolution figures taken from:
`http://www.diegm.uniud.it/fusiello/papers/riao00.pdf
`
`1037
`
`U.S. Patent No. 6,157,747 (“Szeliski”)
`
`1038 Michael Irani & P. Anandan, “Video Indexing Based on Mosaic
`Representations,” 86 Proceedings of the IEEE 905 (1998), attaching
`purchase receipt (“Irani ’98)
`
`1039
`
`Frank Nielsen, “Randomized Adaptive Algorithms for Mosaicing
`Systems,” 83 IEICE Transactions on Information Systems 1386 (2000)
`(“Nielsen”)
`
`1040
`
`
`Deposition Transcript of Carlos Vazquez (5/22-5/23)
`
`
`
`
`vi
`
`

`

`
`
`
`Petitioner Prime Focus submits this Opposition to Patent Owner’s
`
`(“Legend”) Motion to Amend (the “Motion”, Paper 41). All emphasis is added.
`
`I.
`
`THE MOTION TO AMEND IS PROCEDURALLY DEFECTIVE
`A. Legend should not be allowed to amend a patent that was
`procured by inequitable conduct.
`
`As set forth in the accompanying Reply in support of the Petition, Legend
`
`committed inequitable conduct when it intentionally failed to inform the USPTO
`
`about the prior art Passmore application, and Legend is perpetuating its inequitable
`
`conduct by representing to the Board that its patent can claim priority after Legend
`
`certified otherwise in its non-publication request. Legend should not be allowed to
`
`save the patent by any means, including by amending. See 37 C.F.R. § 42.12
`
`(granting the Board broad sanctioning authority).
`
`B.
`
`The amended claims constitute double patenting.
`
`The amended claims are nearly verbatim identical to claims found in the
`
`‘081 and ‘670 Patents, including those claims in the ‘081 and ‘670 Patents where a
`
`color parameter expressly comprises a luminance or saturation value. E.g.,
`
`compare Motion at Amended Claim 21, with Ex. 1003, ‘081 Patent at Claim 5
`
`(“wherein said setting said at least one color parameter is a function of a luminance
`
`value”). The amended claims constitute obviousness-type double patenting
`
`because the amended claims merely restrict the previously claimed color parameter
`
`(which by definition consists of hue, saturation, and luminance) to a subset of color
`
`
`
`1
`
`

`

`
`
`
`parameters (namely saturation and luminance). Legend’s Motion does not even
`
`consider the glaring double patenting issue and therefore should be denied.
`
`C. Legend did not adequately analyze the prior art.
`
`Legend offers the generic statement that it has considered “prior art known
`
`to Patent Owner,” but that representation is demonstrably false.
`
`i.
`Legend did not consider prior art of record1 Sandrew.
`In IPR2016-01491, Prime Focus is currently challenging the validity of U.S.
`
`Patent No. 9,286,941, which also belongs to Legend and claims priority to the ‘793
`
`Patent challenged here. See Ex. 1031 at Title Page. The PTAB instituted that IPR
`
`and held that there is a reasonable likelihood that claim 1 of the ‘941 Patent was
`
`anticipated by U.S. Patent No. 4,984,072 (“Sandrew”). See IPR2016-01491, Paper
`
`13 at p. 13-14. Notably, claim 1 of the ‘941 Patent is nearly verbatim identical to
`
`most of the steps in proposed amended claim 27, as shown in the following table
`
`along with the disclosure from Sandrew cited in the -01491 Petition:
`
`
`
`
`
`1 Even if not “of record,” the relevant prior art from an IPR of a CIP of the patent
`
`challenged in this proceeding is material prior art that Legend should have
`
`addressed pursuant to its duty of candor and good faith to the Office under 37
`
`C.F.R. § 42.11.
`
`
`
`2
`
`

`

`
`
`Proposed Amended
`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;
`
`
`Anticipated Claim 1 of
`‘941 Patent
`A system configured to
`modify a set of time
`ordered digital images
`comprising a computer
`having memory and a
`program stored in said
`memory that is
`configured to:
`associate a first mask
`with a motion object in
`a first image at a first
`mask location;
`
`copying said first
`mask to create a
`second mask
`associated with a
`second image;
`
`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
`
`copy said first mask to
`create a second mask
`associated with a
`second image;
`
`move said second mask
`to a second mask
`location associated with
`said motion object in
`said second image;
`reshape said second
`mask to fit said motion
`object in said second
`image based on
`underlying image data
`in said second image.
`
`
`
`3
`
`Cited Portions of Sandrew
`(Ex. 1032)
`“A system and method for color
`enhancing an image or a series of
`image frames” (Abstract)
`
`“The host computer bus permits
`the image processing subsystem”
`(6:16-20)
`
`“Movement of the pointing
`device effects an analogous
`movement of the cursor and the
`picture elements selected by this
`movement (which are displayed
`on a graphics plane known as the
`‘mask plane’) are used to define
`the edge of an area.” (4:9-16, 27-
`32)
`
`(See also 5:20-22)
`“the ability to copy predefined
`parts of the preceding or key
`frame’s region memory contents
`and to use those parts in
`subsequent frame processing”
`(5:1-4)
`“[when] some of the objects of a
`frame move, a corresponding
`portion of the region memory
`may be translated as well.”
`(5:21-23)
`“After copying, small
`adjustments may be made to the
`new region memory contents”
`(5:4-5)
`
`“The copied contents may, of
`course, be altered by the operator
`
`

`

`
`
`
`
`
`
`
`
`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.
`
`to conform to the
`underlying frame contents”
`(7:17-19)
`
`(See also 4:65-66)
`(Not discussed in -01491
`Petition)
`
`“selecting a range of luminance
`values representative of the
`brightness of said picture
`elements [and] selecting a range
`of saturation values
`representative of the saturations
`of the picture elements” (13:30-
`34 )
`
`(See also 11:49-56 and 11:20-47)
`(Not discussed in -01491
`Petition)
`
`“extrapolating color
`enhancement from key frames to
`entire scenes.” (4:57-58)
`
`(See also 3:53-58 and 7:11-17)
`
`
`
`Prior art Sandrew is not just “close” prior art that should have been
`
`addressed in the Motion to Amend—Sandrew actually anticipates proposed
`
`amended claim 27. As background, prior art Sandrew teaches “A system and
`
`method for color enhancing an image or a series of images such as a motion
`
`picture,” in other words, adding color to black-and-white movies. Ex. 1032 at
`
`Abstract. Such color enhancing expressly includes the setting of saturation and
`
`luminance values in a manner that (according to Legend) operates as a depth
`
`
`
`4
`
`

`

`
`
`
`parameter by creating shadows and lighting. See, e.g., Ex. 1032 at 13:30-34
`
`(“selecting a range of luminance values representative of the brightness of said
`
`picture elements [and] selecting a range of saturation values representative of the
`
`saturations of the picture elements”); see also id. at, e.g., 11:49-56 (applying
`
`“bright reflection” via the HLS system) and 11:20-47 (manipulating saturation
`
`values to make results “much more realistic”). Of course, when colorizing a black-
`
`and-white movie, an artist must ensure that objects are consistently colored
`
`throughout the scene. Prior art Sandrew therefore logically teaches “extrapolating
`
`color enhancement from key frames to entire scenes.” Ex. 1032 at 4:57-58; see
`
`also id. at, e.g., 3:53-58 and 7:11-17 (applying HSL values from the first image
`
`mask to the second image). In other words, prior art Sandrew teaches setting the
`
`color—which includes saturation and luminance values as “depth parameters”—of
`
`a first mask in a first image and then applying that color to a second image in the
`
`scene. That process directly reads on the last two steps in proposed amended claim
`
`27 shown above, and therefore prior art Sandrew anticipates amended claim 27.
`
`Legend’s failure to address prior art Sandrew at all is a clear signal that
`
`Legend did not actually consider the prior art known to it, which is particularly
`
`egregious neglect given that the PTAB squarely indicated the materiality of this
`
`prior art in an IPR of a CIP of the challenged ‘793 Patent. The Motion should be
`
`denied in full on account of Legend’s obvious lack of candor with the Board.
`
`
`
`5
`
`

`

`
`
`
`Legend ddid not coonsider kn
`
`
`
`
`
`
`
`own priorr art Burt..
`
`
`
`ii.
`
`
`
`
`
`SSandrew is not the onnly prior artt at issue inn IPR20166-01491 thaat Legend
`
`
`
`
`
`
`
`
`
`
`
`overtly failed to coonsider in its Motionn to Amendd. In particcular, U.S.. Patent Noo.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5,649,0
`
`
`
`
`32 (“Burt””), submitteed as Exhibbit 1007 inn IPR2016--01491, is
`
`
`
`
`
`
`
`
`
`prior artt that Legeend knew aabout but fafailed to adddress. As
`
`
`
`
`
`
`
`
`
`anticipato
`
`ry
`
`
`
`backgrounnd, Burt is
`
`
`
`concernned with thhe creation of a “mosaaic, i.e., ann image thaat containss a pluralityy of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`individuual images,” which iss equivalennt to the “ccomposite bbackgrounnd” claimedd in
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the ‘7933 Patent. EEx. 1033 att 1:21-22. Figure 9 oof Burt conntains a str
`
`
`
`
`
`
`
`
`
`
`
`
`
`aightforwaard
`
`
`
`illustrattion of the process off creating such a mos
`
`
`
`
`
`
`
`
`
`aic that dirrectly mapps to the firrst
`
`
`
`
`
`
`
`two limmitations off proposed amended cclaim 21:
`
`
`
`
`
`
`
`B
`
`urt (Ex. 1
`
`033)
`
`
`
`Fiigure 9:
`
`
`
`Propoosed Amennded
`Claim 21
`
`
`A methood for moddifying
`
`
`a set of time orderred
`
`digital iimages
`
`comprissing:
`
`
`
`associatting a pluraality
`
`
`of imagges comprissing
`
`
`commonn backgrouund
`
`elementts;
`
`
`
`obtaininng a compoosite
`
`
`backgroound compprising
`
`
`said pluurality of immages
`
`
`whereinn said compposite
`
`
`backgroound excluudes a
`
`
`set of mmotion objeects
`
`
`movingg in relationn to
`
`said commmon
`
`
`
`6
`
`
`
`

`

`
`
`background elements;
`
`
`See generally 16:49-67 (describing Figure 9) and 6:36-
`12:43 (describing the “Mosaic Construction System”)
`
`
`
`Burt goes on to teach the next step in proposed amended claim 21, which is
`
`“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.” Specifically, Burt teaches “highlighting of
`
`specific areas on the mosaic, color enhancing specific areas, [and] fading . . . .”
`
`Ex. 1033 at 13:6-9; see also id. at Claim 22 (similar disclosure). Since color by
`
`definition includes saturation and luminance, when Burt teaches “highlighting,”
`
`“color enhancing,” and “fading” portions of the mosaic, it is teaching setting
`
`“depth parameters” as that term has been redefined in Legend’s amendments.
`
`Burt also at least implicitly teaches the last step in proposed amended claim
`
`21, which is “applying said at least one depth parameter to at least one image
`
`selected from said plurality of images using a computer.” Specifically, Burt
`
`teaches that “a user can easily view the mosaics and extract any individual frame
`
`within the mosaic..” Ex. 1033 at 15:7-11. As discussed above, Burt teaches
`
`highlighting/color enhancing/fading portions of the mosaic, and when the
`
`individual frame is extracted from that modified mosaic, that same
`
`highlighting/color enhancing/fading will appear in the extracted image. See id.
`
`These changes to the color (including saturation and luminance) of individual
`
`
`
`7
`
`

`

`
`
`
`extracted frames based on changes in the overarching mosaic is one of the core use
`
`cases for mosaics. As one of ordinary skill in the art would recognize:
`
`The efficiency of using mosaics for video enhancement is
`due to the fact that the mosaic is an efficient
`representation of the video sequence. Rather than
`enhancing the frames one-by-one . . . the enhancement of
`the entire sequence (or layer) is done in a single step
`within the mosaic coordinate system, and only then are
`the enhanced frames retrieved from the enhanced mosaic.
`
`Ex. 1034 (“Irani ‘96”) at p. 346 (emphasis omitted). Accordingly, one of ordinary
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`skill in the art would have understood and fully expected the highlighting/color
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`enhancing/fading of Burt’s mosaics to be applied to the individual frames when
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`those frames were extracted from the mosaic.
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`Burt anticipates proposed amended claim 21 (or at least renders proposed
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`amended claim 21 obvious in view of the disclosure from Irani ’96 cited above).
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`The Motion to Amend should therefore be denied because Legend has abjectly
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`failed to satisfy its duty of candor to the Board by failing to even mention Burt—
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`prior art directly at issue in an IPR of a CIP of the ‘793 Patent.
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`iii. Legend did not consider other known prior art.
`Legend also failed to address prior art known to it outside of IPR2016-
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`01491. The only three prior art references discussed by Legend were all cited
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`during prosecution of the ‘793 Patent application. See Ex. 1002 at p. 142, 150, and
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`218. But there are a dozen continuations and continuations-in-part claiming
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`8
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`priority to the ‘793 Patent, and Legend does not address a single additional
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`reference cited by the Examiners or PCT Search Authorities in any of those
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`prosecution histories. It is simply not credible that none of those additional
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`references warrant any analysis by Legend, especially where some of the
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`subsequent patents in the family were so similar to the ‘081 and ’670 Patents (the
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`claimed parents of the challenged ‘793 Patent that allegedly fully support the
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`amended claims) that they required terminal disclaimers. See, e.g., Ex. 1035 at p.
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`4-5 (rejecting a continuation-in-part of the challenged ‘793 Patent for double
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`patenting over the ‘081 and ‘670 Patents). At least some of the prior art unearthed
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`by the Examiners during the prosecution of the subsequent patents in the family
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`should have been addressed in Legend’s motion to amend, but none of it was.
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`Legend analyzed only three references in total and provides no explanation
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`for why it believes that only those three references are worth discussing other than
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`a threadbare representation that they are the “closest” prior art. See Motion at p.
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`16. Legend concludes that the prior art is “not very close,” but that is simply not
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`credible given that Legend admits that the limitation proposed to be added by
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`amendment is found pervasively in the prior art.
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`9
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`iv. Legend did not adequately analyze the added limitation in
`the context of the prior art.
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`Legend argues that the limitation proposed to be added by amendment is
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`found pervasively in the prior art (as it must in order to make its claim for priority).
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`If that is true, then
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`it should be revealed . . . whether or not the [added]
`feature was known in combination with any of the other
`elements in the claim. If any such combination was
`known, the motion should explain the surrounding facts
`in that regard, and why it would not have been obvious
`for one with ordinary skill in the art to adapt that
`knowledge for use with the rest of the claim elements.
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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 at p. 4-5). But Legend’s analysis in its
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`Motion to Amend does not discuss what other elements the added limitation is
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`found in combination with in the prior art. In fact, Legend’s analysis of at least
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`two of the three prior art references it chose to discuss (Moed and Tanaka) does not
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`even state whether the added limitation is found in those references. See Motion at
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`p. 16-18. For this reason alone, Legend’s Motion should be denied for failing to
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`identify what other elements the added limitation could be found in combination
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`with in the prior art.
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`v.
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`Conclusion regarding Legend’s failure to consider the
`known prior art.
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`Legend claims it conducted a “a review of the prior art in the original
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`prosecution history of the ‘793 patent, the ‘670 patent, and the ‘081 patent, and
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`10
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`other prior art known to Patent Owner” (Motion at p. 16), but clearly Legend never
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`actually got around to the “other prior art known to Patent Owner.” The Motion
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`should be denied because Legend has clearly failed to satisfy its duty of candor.
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`II. THE AMENDED CLAIMS ARE NOT PATENTABLY DISTINCT
`A. All amended claims are anticipated by the ‘081 and ‘670 Patents.
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`Entitlement to priority requires more than mere disclosure in a claimed
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`parent—it requires a timely and proper claim to priority. Encyclopaedia
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`Britannica, Inc. v. Alpine Electronics of America, Inc., 609 F.3d 1345, 1349-50
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`(Fed. Cir. 2010). As explained in Prime Focus’s accompanying Reply, Legend
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`expressly disclaimed priority when it filed a non-publication request certifying that
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`the invention was not the subject of a PCT application. See Ex. 1002 at p. 1. As a
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`result, the amended claims should not be entitled to priority because Legend did
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`not make a timely and proper claim of priority. See Encyclopaedia Britannica, 609
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`F.3d at 1349-50.
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`Legend should not be allowed to rescind its disclaimer of priority at this late
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`stage for at least two reasons. First, Legend’s non-publication request was made in
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`August 2009, so any window for rescinding such certification passed years ago, at
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`latest by March 2011 when the patent was issued and published. See MPEP
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`1122.III (“While applicant cannot undo the fact that an improper certification was
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`made, any applicant who has made such a mistake should promptly file a
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`11
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`rescission of the nonpublication request and note that the original certification was
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`improper.” (emphasis added)). Second, patentees are not allowed to retroactively
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`alter their patent rights by modifying previous statements regarding priority;
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`Legend cannot be allowed to claw back from the public the rights that were
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`otherwise clearly settled. See Woodbolt Distribution, LLC v. Natural Alternatives
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`International, Inc., Appeal No. 2015-000225, 2015 WL 4455026, at *7 (PTAB
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`July 17, 2015) (“It makes no sense to allow the applicant to rewrite history and
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`resurrect the [] application’s priority claim.”). In sum, Legend disclaimed priority
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`to the ‘081/’670 Patents and that disclaimer cannot now be rescinded; as a result,
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`the claimed parents are actually prior art to the proposed amended claims.
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`Turning now to the patentability of the amended claims, Legend argues that
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`the ‘081 and ‘670 Patents fully support the amended claims. See Motion at p. 5-
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`13. Thus, since the ‘081/’670 Patents are actually prior art to the proposed
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`amended claims, the ‘081 and ‘670 Patents are each fully anticipatory references.
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`B. Amended claim 21 is anticipated by Burt and is also obvious over
`Burt in view of Irani ‘96.
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`As discussed above, proposed amended claim 21 is anticipated by Burt.
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`And while the final step of proposed amended claim 21 is taught implicitly by
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`Burt, the final step is taught explicitly by Irani ‘96, as discussed above; therefore,
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`proposed amended claim 21 is also obvious over the combination of references.
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`12
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`TThere is ammple motivaation to co
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`mbine thesse referencces. Burt tteaches thaat
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`“The auutomaticallly generateed mosaic ffinds manyy practical
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`uses,” butt Burt is
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`primarilly concernned with a wway to autoomaticallyy generate mmosaics raather than
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`explainiing in detaail the actuaal practicall use of thoose mosaiccs. See Exx. 1033 at 22:42-
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`57 (devoting only
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`one paraggraph to thee use of moosaics). Irrani ’96, hoowever,
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`actuallyy goes into detail about “severall powerfull video appplications oof mosaic
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`represenntations including . . . video enhhancementt . . . .” Seee Ex. 10344 at Abstraact
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`(emphasis omittedd). An artiist would nnot simply
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`teachinggs of Burt for no reasson; the arttist would
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`have creatted a mosa
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`ic per the
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`have wantted to use iit for
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`somethiing, and Iraani ‘96 teaaches exacttly the kindd of use thaat would bbe expectedd for
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`one of oordinary skkill in the aart.
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`CC. Amended claimm 21 is an
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`ticipated bby and obbvious overr Odone.
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`Odonne (Ex. 10336)
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`See inffra.
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`Amendded Claimm
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`21
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`A methood for
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`time orddered
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`digital iimages
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`comprissing:
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`modifyiing a set off
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`pluralityy of imagees
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`associatting a
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`comprissing
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`commonn
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`backgroound
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`elementts;
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`13
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`obtaininng a
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`compossite
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`backgroound
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`comprissing said
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`whereinn
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`pluralityy of imagees
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`said commposite
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`backgroound
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`excludees a set of
`objects
`motion
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`to said ccommon
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`backgroound
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`elementts;
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`movingg in relationn
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`setting aat least onee
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`depth paarameter
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`associatted with a
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`region wwithin saidd
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`compossite
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`backgroound,
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`whereinn said at
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`least onne depth
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`of at leaast one of
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`luminannce and
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`parametter consistss
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`See alsso, e.g., p. 594 (Intro
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`elemennts in the oobserved sccene).
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`duction disscussing b
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`ackgroundd
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`See alsso, e.g., p. 594 (“mossaic of the
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`backgrounnd and
`p. 595-96
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`sequennces of the foregrounnd moving
`objects”);
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`(discusssing creatiing mosaiccs and extrracting mottion objectts).
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`14
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`saturatioon;
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`applying said at
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`least onne depth
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`parametter to at
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`least onne image
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`selectedd from saidd
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`pluralityy of imagees
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`using a computer.
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`Figure
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`7(a) changges the satuuration andd/or luminnance of
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`certainn pixels in tthe compoosite backgrround to mmake them
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`ster appearrs to
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`appearr bright whhite or puree black so tthat the po
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`be entiirely in fronnt of the wwall.2
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`See alsso, e.g., p. 597 (discuussing mannipulating mmosaics).
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`7(b). Thiss image is
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`a modifiedd version oof the midddle
`Figure
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`in the origginal “pluraality of imaages” (Figuure 1, abovve).
`image
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`turation anad their satels have haOnly ccertain pixe
`d/or
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`luminaance alteredd (i.e., chaanged to blaack or whiite) to creaate
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`the perrception that the postter is behinnd the car aand in fronnt of
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`the wall.2
`597 (“ConSee alsso, e.g., p.
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`ntent-basedd Manipulaation” and
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`“Resullts” sectionns discussinng changess to the oriiginal
`e mosaic).
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`sequennce based oon correspoonding chaanges in th
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`DD. Amended claimms 22-25 aare obviouus over Oddone in vieew of Szeliiski.
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`Motivatiion to Commbine
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`i.
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`OOdone is prrimarily cooncerned wwith how too handle mmoving objeects presennt in
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`scenes tthat are to bbe turned iinto mosaics, rather tthan how tto construcct the
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`2 Legennd treats peerceived deepth orderinng as equivvalent to pperceived ddepth for
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`purposees of what constitutess a “depth pparameter..” See Mo
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`tion at p. 110.
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`15
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`background mosaic in the first place. See Ex. 1036 at p. 594. Odone devotes less
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`than a page to the topic of constructing the background mosaic (id. at p. 595);
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`Odones treats the creation of the background mosaic as simply “The starting point
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`of our method” (id. at p. 594). Odone makes assumptions about how one would
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`construct the background mosaic:
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`Let us suppose that . . . point correspondences