`
`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 REPLY
`IN OPPOSITION TO PATENT OWNER’S RESPONSE
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`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`
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`Page(s)
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`I.
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`II.
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`TECHNOLOGY BACKGROUND ....................................................... 2
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`PRIORITY DATE OF THE ‘793 PATENT .......................................... 4
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`A.
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`B.
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`C.
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`Legend admitted during prosecution that the ‘793 Patent
`cannot claim priority to the ‘670 or ‘081 Patents. ....................... 5
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`Legend’s claim construction is so broad that the
`‘081/’670 Patents do not contain sufficient written
`description to support the claims of the ‘793 Patent. ................... 7
`
`A proper claim construction of “depth parameter”
`confirms that the ‘793 Patent represents a break in the
`chain of priority. ......................................................................... 10
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`III. CLAIMS 4-6 AND 16-18 ..................................................................... 21
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`IV.
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`INEQUITABLE CONDUCT ............................................................... 24
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`A.
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`B.
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`Legend knew about the Passmore application but did not
`tell the USPTO about it. ............................................................. 24
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`Legend intentionally deceived the USPTO so that Legend
`could steal ownership of disputed patent rights. ........................ 25
`
`
`
`
`
`i
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`TABLE OF AUTHORITIES
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`Other Authorities
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`MPEP § 1122 III ...................................................................................................................7, 8
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`Page(s)
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`ii
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`EXHIBIT LIST
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`Exhibit Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`
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`U.S. Patent No. 7,907,793 (“the ‘793 Patent”)
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`File History for the ‘793 Patent
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`U.S. Patent No. 7,181,081 (“the ‘081 Patent”)
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`U.S. Patent No. 7,333,670 (“the ‘670 Patent”)
`
`U.S. Patent Application No. 12/241,992 (“Passmore”)
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`U.S. Patent No. 7,573,475 (“Sullivan”)
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`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
`
`iii
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`
`
`
`
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`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)
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`Docket No. 28-4, N4D, LLC v. Legend3D, Inc., Case No. 3:13-cv-
`02656-BEN-NLS (S.D. Cal. Jan. 31, 2014)
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`iv
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`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”)
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`U.S. Patent No. 5,649,032 (“Burt”)
`
`1029
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`1030
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`1031
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`1032
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`1033
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`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
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`U.S. Patent No. 6,157,747 (“Szeliski”)
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`1038 Michael Irani & P. Anandan, “Video Indexing Based on Mosaic
`Representations,” 86 Proceedings of the IEEE 905 (1998), attaching
`purchase receipt (“Irani ’98)
`
`1039
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`1040
`
`
`
`
`
`Frank Nielsen, “Randomized Adaptive Algorithms for Mosaicing
`Systems,” 83 IEICE Transactions on Information Systems 1386 (2000)
`(“Nielsen”)
`
`Deposition Transcript of Carlos Vazquez (5/22-5/23)
`
`
`v
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`Petitioner (“Prime Focus”) respectfully submits this Reply in opposition to
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`Patent Owner’s (“Legend”) Response (Paper 36). Prime Focus certifies that this
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`Reply contains 5,487 words as counted by Microsoft Word, excluding the title
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`page, tables of contents and authorities, exhibit list, signature block, this word
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`count, and certificate of service. Unless noted, all emphasis is added.
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`I.
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`TECHNOLOGY BACKGROUND
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`In order to create a 3D viewing experience based on 2D images, a viewer
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`simultaneously looks at a pair of two slightly different 2D images: one image seen
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`only by the left eye and one image seen only by the right eye. Ex. 2005 at 1:39-43.
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`The disparity between these images (i.e., the relative difference in position of an
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`object when viewed from two different perspectives) creates a perception of 3D
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`depth. Ex. 2005 at 1:22-30 and 11:16-18. The following graphic illustrates the
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`common method of using polarized glasses to provide such a 3D viewing
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`experience:
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`2
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`The two complementary 2D images (a “stereoscopic” pair) may be captured
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`simultaneously by two cameras placed right next to each other, similar to how two
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`human eyes are arranged. Ex. 2005 at 2:13-21. However, older movies were
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`originally shot by only one camera, so for those movies, a second, complementary
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`image must be generated from scratch because there is no second camera image
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`available. See id. at 2:22-25.
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`To create complementary images from scratch, pixels in the original image
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`are carefully shifted left or right. The closer an object is to the viewer, the more
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`the pixels representing that object appear to shift towards the midline of the viewer
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`relative to the background; that is a closer object appears to move to the right of
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`the left eye’s view and to the left of the right eye’s view. Ex. 2005 at 15:19-35.
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`The prior art teaches a two-step process to determine exactly how much to
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`shift the pixels in order to create the 3D scene. First, “each pixel is assigned a
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`depth vaalue repressenting disstance to thhe viewer, eeither relattive or abs
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`olute” (Exx.
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`away, 10 ffeet
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`1017 at 1:56-57); in other wwords, objeccts are deteermined too be 5 feet
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`away, etc. Secondd, those deepth valuess are plugg
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`ed into a foformula thaat determinnes
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`how muuch pixels mmust be shhifted in orrder to makke it appearr as if the oobject is thhat
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`distancee away. Exx. 1017 at 1:48-53. EExhibit 10
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`18 teachess standard ppixel
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`image (xl)
`displaceement formmulas for thhe left eye
`) and right
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`e (xr):
`eye image
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`of the objeect
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`is xc, the de
`where thhe pixel’s location inn the originnal image i
`epth value
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`is Z, andd the otherr variables are relatedd to the virtrtual camerra setup. EExhibit 10118 at
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`p. 193.
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`PRIORITYY DATE OOF THE ‘7793 PATEENT
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`allenged ‘7793
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`II.
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`P T
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`The validityy of (at leaast) Claims 1-3, 7-15,, and 19-200 of the ch
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`Patent aall hinge onn a single ddispute bettween the pparties aboout priorityy date. Thee
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`challengged ‘793 PPatent is a ccontinuatioon-in-part oof U.S. Pattent No. 7,,333,670 (EEx.
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`1004, “tthe ‘670 Paatent”), whhich is a diivisional off U.S. Pateent No. 7,1
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`81,081 (Exx.
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`1003, “tthe ‘081 Paatent”). Thhe Petitionn asserts thhat there is
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`priority between thhe ‘670/‘0081 Patentss and the chhallenged
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`a break in
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`the chain
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`of
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`‘793 Patennt. If priorrity
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`does noot attach, thhen these CClaims are invalid beccause Legeend has offffered no otther
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`argumennt to overccome the coombinationns of refereences set oout in the PPetition. SeSee
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`Paper 36 (“Responnse”) at p. 19-21.
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`A. Legeend admittted duringg prosecuution that
`Patents.
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`claimm priority to the ‘67
`0 or ‘081 P
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`the ‘793 PPatent cannnot
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` When the ‘793 Patennt applicatiion was filled, Josephh Mayo—fformer leadd
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`a non-pubcounsell for Legennd in this IPPR—filed
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`lication reqquest certi
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`fying that
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`the
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`in an appl
`inventioon was not disclosed
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`ication fileed under a
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`multilateraal
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`internattional agreeement thatt requires ppublicationn at eighteeen months
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`Ex. 10002, ‘793 Paatent File HHistory at pp. 1. But thhe ‘081 Paatent was thhe subject
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`after filingg:
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`of a
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`PCT application requiring puublication at eighteenn months aafter filing
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`Ex. 10003, ‘081 Paatent at Titlle Page. TThe non-puublication rrequest therrefore
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`certifiedd that the ‘793 Patentt cannot cl
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`aim prioritty to the ‘0081 Patent
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`or its
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`effectivvely identiccal divisionnal, the ‘6770 Patent.
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`OOddly, the ‘793 Patennt applicantt still tried d to claim ppriority to tthe ‘081
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`Ex. 1002
`Patent.
`at p. 2. In
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`the initial
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`Filing Recceipt, the UUSPTO waarned abouut
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`the incoonsistency between thhe certificaation in thee non-publ
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`claim too priority oof a PCT appplication:
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`ication reqquest and thhe
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`Ex. 10002 at p. 1299-30. Legeend did nott, howeverr, rescind thhe non-pubblication
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`request when it filled additional materiaals. Ex. 10002 at p. 1
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`34-77. In
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`the Filing
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`Receiptt directed too those addditional maaterials, th
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`e USPTO
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`again warnned Legen
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`d to
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`rescind its non-puublication rrequest if LLegend inteended to cllaim prioriity. Ex. 10002
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`at p. 1800-81. Legend still diid not resciind its nonn-publicatioon request,, and the
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`Examinner proceedded to cite prior art reeferences thhat have a
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`priority daate well aftfter
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`the ‘0811 Patent—iin recognittion of the
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`certified bbreak in priiority. Seee Ex. 1002
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`at
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`p. 189. Legend neever rescinnded its non-publicatiion requesst, and the aapplicationn
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`was in ffact not published unntil it issuedd. See gennerally Ex.
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`1002 (filee history
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`containiing no resccission).
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`LLegend’s ceertificationn that the ‘7793 Patentt cannot claaim prioritty to its alleeged
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`parents make sensse in contexxt. As bacckground, tthe ‘793 Paatent was ffiled as a
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`continuation-in-part that added a huge amount of new material that Legend admits
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`is “related to 2D to 3D conversion [and which] the ‘793 Parent Patents do not
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`include.” Paper 12 at p. 20. And the issued claims are effectively verbatim
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`identical to those claims that were originally applied for, since the patent issued
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`without rejection. Compare Ex. 1002 at 56-58 (original claims in application),
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`with Ex. 1001 at 34:57-36:51 (substantially identical issued claims). Why would
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`anyone add all this new matter but not claim any of it even from the start? Of
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`course the new claims were directed to the newly added matter, otherwise there
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`would be no reason to add it.
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`In short, Legend certified that the ‘793 Patent could not claim priority to the
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`‘081/’670 Patents. Legend must be held to its unequivocal representation to the
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`USPTO that Legend maintained despite multiple warnings and which Legend
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`never withdrew as required by MPEP § 1122 III if indeed it were erroneous
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`(“While applicant cannot undo the fact that an improper certification was made,
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`any applicant who has made such a mistake should promptly file a rescission of the
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`nonpublication request and note that the original certification was improper.”).
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`B.
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`Legend’s claim construction is so broad that the ‘081/’670 Patents
`do not contain sufficient written description to support the claims
`of the ‘793 Patent.
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`Legend’s current construction of the term “depth parameter” is a “parameter
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`that provides a perceived depth.” Response at p. 3. Legend’s Response discusses
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`7
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`at lengthh how satuuration andd luminance can be ussed to creaate haze annd shadowss
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`that purrportedly create the pperception oof depth; ththerefore, LLegend arggues,
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`saturatioon and lumminance quualify as “ddepth parammeters.” SSee generallly Responnse
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`at Sectioons III-IV.. Legend tthen goes oon to arguee that the ‘0081/’670 PPatents disccuss
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`creatingg shadows and lightinng by modiifying satuuration andd luminanc
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`e, so the
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`purporteed parents provide suupport for tthe claime
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`d “depth pparameter”
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`found in tthe
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`‘793 Paatent. See iid. at Section VI.
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`TThe gaping hole in thiis argumennt, howeveer, is that, uunder Legeend’s
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`construcction of thee term “depth parameeter,” saturration and
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`luminancee are not thhe
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`only deppth parameeters:
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`There are
`Response at p. 3.
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`admittedlyy “parametters” otherr than saturration and
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`luminannce that woould qualiffy as “depthh parameteers” under
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`of the teerm, and saaturation aand luminannce are on
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`ly “exampple[s].” Seee id.; see aalso,
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`exhausttive list of everythingg that couldd be a paraameter usedd to create
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`he “cannoot make an
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`One example of something other than saturation and luminance that qualifies
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`as a “depth parameter” under Legend’s construction of the term is disparity, as
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`Legend’s expert Mr. Vazquez admitted. Ex. 1040 at 119:23-24 (“Disparity could
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`be seen as a depth parameter.”). Disparity is by definition the result of comparing
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`two complementary, stereoscopic images. Ex. 2005 at 1:22-30 and 11:16-18
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`(definition of “disparity”). Nowhere in the ‘081/’670 Patents is there any
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`discussion about disparity or stereoscopic image pairs—those terms are never ever
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`even used. Neither the Response nor Mr. Vazquez ever suggest otherwise. In fact,
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`Legend admitted that the ‘081/’670 Patents do not include any information about
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`the stereoscopic image pairs required to produce disparity:
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`[T]he ‘793 Patent specification includes subject matter related
`to 2D to 3D conversion that the ‘793 Parent Patents do not
`include, this subject matter . . . .
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` . . Rather, the filing date for this subject matter of creating
`stereoscopic views . . . .”
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` .
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`Paper 12 at p. 20.
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`Moreover, disparity is not the only “depth parameter” beyond saturation and
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`luminance under Legend’s claim construction. According to Legend’s expert Mr.
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`Vazquez, the “size of known objects” and hue are also potential depth parameters,
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`and there “could be” other depth parameters as well. Ex. 1040 at 133:22-134:11.
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`But again, neither the Response nor Mr. Vazquez ever point to any teachings in the
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`‘081/’670 Patents to support the argument that there is any description by which a
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`9
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`POSITA could recognize that the inventor of those patents had possession of the
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`broad “depth parameter”-related invention of the ‘793 Patent.
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`In short, Legend’s construction of a “depth parameter” is broad enough to
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`include parameters other than saturation and luminance, but Legend’s Response
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`and Mr. Vazquez only argue that the ‘081/’670 Patents suggest how saturation and
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`luminance can be used as depth parameters. Legend has failed to make any
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`showing at all regarding sufficient written description to justify priority for claims
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`directed to such broad “depth parameters.”
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`C. A proper claim construction of “depth parameter” confirms that
`the ‘793 Patent represents a break in the chain of priority.
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`Legend’s construction of the term “depth parameter,” discussed in the
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`previous section, is completely untethered to the facts. The specification of the
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`‘793 Patent unequivocally leads to a different construction of the term than that
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`proposed by Legend.
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`10
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`FFigures 42-70 (all of wwhich were newly addded in thee ‘793 Pateent) detail tthe
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`3D convversion of a 2D imagge of a mann holding aa floating oorb. See, ee.g., Figuree 42:
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`11
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`In Figurre 56,1 we can see froom a bird’ss eye vieww that the viisual effec
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`ts artist haas
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`placed tthe orb outt in front inn virtual sppace, behinnd that is thhe man’s aarm, behindd
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`that is thhe man’s hhead, and bbehind thatt is the bacckground:
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`1 All color figuress are taken from the ccorrespondding figuress filed by LLegend as
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`2003 in thhe related IIPR2016-01491. Seee Ex. 1019
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`at p. 49.
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`12
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`The speecification contains sccreenshotss of the sofftware interrface used
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`by a visuaal
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`effects aartist to arrrange thesee objects inn 3D spacee, and withhin a groupp of controlls
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`called ““Layer Deppth” there iis an optionn to translaate objectss like the spphere in thhe
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`“Z” direection:
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`Ex. 10001 at Fig. 54 (croppedd; red circles added).
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`the settiing of the ZZ location of the spheere, the ‘7993 Patent sstates that tthe proces
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`shows tthe “depth assigned too the crysttal ball.” EEx. 1001 att 33:13; seee also id. aat
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`8 (similar
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`AAs these Figgures illustrate, the ‘‘793 Patennt uniformlly and rep
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`eatedly
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`describees “depth”” as correspsponding too a three-ddimensionaal positionn coordinaate of
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`objects. See, e.g., Ex. 1001 at:
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`Key M-Obbject 18a mmay be assiigned a deppth of 32 ffeet from thhe camera
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`apture poinnt while KKey M-Objeect 18c maay be assiggned a deptth of 28 feeet
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`c f
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`rrom the caamera captuure point.” (16:6-8);
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`n assigned a[T]he jackket and persson’s face have been
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`thhat is in frront of the backgrounnd.” (32:5
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`6-58).
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`As expllained in thhe Technollogy Backgground aboove, the puurpose of arrranging
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`objects in virtual sspace by asssigning a depth (Z) tto them is
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`to determiine how muuch
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`the pixeels represennting the oobjects in thhe originall image neeed to be diisplaced in
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`order too create 3DD stereoscopic image pairs that mmake it loook like thee objects arre at
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`the speccified distaance:
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`DDr. Forsythh testified thhat a “deptth parametter” in the
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`context of f the ‘793
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`Patent is “the deptth of the rooot coordinnate systemm of a shappe.” Ex. 20012 at 169
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`:9-
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`12 (see errata on pp. 272). As he statedd in his decclaration, “
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`if an artist
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`center of aa sphere is
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`away, the
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`[location oof the] cennter (a deptth
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`parametter) can bee used to deetermine thhe precise ddepth valuues associatted with alll
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`the poinnts on that sphere.” EEx. 1009 att ¶ 57. Us
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`ing the samme Figure
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`54 of the ‘
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`Patent aas an exammple, the Z coordinatee corresponnds to the llocation off the centerr of
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`the spheere (i.e. thee depth parrameter), aand the deppth value oof each speccific point
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`on
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`the spheere is simpply calculatted based ooff the locaation of thee center:
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`Ex. 10001 at Fig. 54 (croppedd; red circles added).
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`panel too set the deepth value oof each inddividual pooint on the
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`need to be since thhat would bbe inefficieent; the arttist simplyy positions
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`sphere, noor does theere
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`the spheere. The bottom line is that, in the ‘793 PPatent, “deppth” meanns the distaance
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`001 at 16:66-8 (“a deppth of 32 ffeet”)), andd a “depth
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`parametter” is just a parametter that conntains distaance informmation for t
`the object.
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`NNot once dooes the ‘7993 Patent taalk about aa “depth paarameter,”
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`“depth
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`value,” or “depth”” as the maanipulationn of saturattion or lumminance vallues. Nor ddoes
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`broad as aanything thhat
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`end nor itss expert pooint
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`the ‘7933 Patent evver suggestt that a “deepth parammeter” is as
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`merely creates a pperceived ddepth. Thaat is why ne
`either Leg
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`15
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`to any disclosure in the ‘793 Patent specification to support their claim
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`construction. See Response at p. 3 (pointing only to its expert declaration at Ex.
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`2024 to support claim construction); Ex. 2024 at ¶¶ 43-44 (Mr. Vazquez providing
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`a claim construction without citation to any specific portion of the ‘793 Patent
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`specification).
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`Interestingly, in the related IPR of a continuation-in-part of the ‘793 Patent,
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`Legend demanded that claim terms used “across the family of related patents in the
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`genealogy . . . be construed uniformly across the family so that the same claim
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`term in the same patent or related patents carries the same construed meaning.”
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`IPR2016-01491, Paper No. 16 at p. 15. Mr. Vazquez admitted that he did not
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`review any continuations or CIPs of the ‘793 Patent in arriving at his claim
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`construction. Ex. 1040 at 178:4-14. Had Mr. Vazquez reviewed other patents in
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`the family, he would have noticed that at least one of the continuations-in-part of
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`the ‘793 Patent expressly disclaims the construction of “depth parameter” that he
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`has proposed, where it states: “smoke, haze or fog, etc., with no depth
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`information.” Ex. 1020 at 45:21-23. Remember, Legend argues that saturation is
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`a “depth parameter” because it can create haze, which purportedly provides a
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`perceived depth (see, e.g., Response at p. 4-5); how can saturation be a “depth
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`parameter” when a member of the ‘793 Patent family states that haze has no depth
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`information?
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`16
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`LLegend’s cllaim constrruction maakes no sennse and, as
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` a result, LLegend cannnot
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`keep itss story straiight. In itss Preliminaary Responnse, Legendd proposedd a
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`construcction of thee term “depth parameeter” as simmply “a paarameter thhat affects
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`depth”:
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`Paper 1
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`2 at p. 29. But “deptth” in the ‘
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`793 Patentt is, withouut questionn, a measurre of
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`the distaance of objjects. See,
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` Patent, Exx. 1001 at
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`16:6-8 (“a
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`depth of 332
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`feet”) annd 32:56-558 (“Z-dimmension or depth”); seee also Ex
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`. 1040 at 772:24-73:2
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`(Legendd’s expert aadmitting tthat “depthh is referriing to the ddistance, aa hypothetiical
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`distancee between the camerra and an oobject in thhe scene”)). So Legeend changeed its
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`proposeed claim coonstructionn in its formmal Responnse to incluude the woord
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`“perceivved”:
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`Paper 36 at p. 3. TThat materrial changee in propossed claim cconstructioon is indicaative
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`of the faact that Legend’s claim construuction is noot tethered
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`specificcation, as aa patent owwner shouldd not need
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`to change
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`its own deefinition off a
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`term.
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`17
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`Legend’s shifting story with respect to the related claim term “depth value”
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`is another example of how baseless Legend’s construction is. Claim 14 of the ‘793
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`Patent states that “setting said at least one depth parameter comprises selecting a
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`numeric depth value.” Legend’s expert, Mr. Carlos Vazquez, is a co-inventor of
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`U.S. Patent No. 8,488,868, which was filed around the same time as the ‘793
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`Patent. See Ex. 1017 at Title Page. Mr. Vazquez’s patent defined “depth value” as
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`follows:
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`a depth value represent[s] distance to the viewer,
`either relative or absolute. Alternatively, the depth value
`of a pixel may be understood as the distance of the point
`of the three-dimensional scene … from a reference plane
`…
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`Ex. 1017 at 1:56-62. Mr. Vazquez reaffirmed his understanding that a “depth
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`value” is a distance in his deposition in the related matter IPR2016-00806:
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`Q: Are you aware of any other definitions of depth value
`[other than as provided in the ‘868 Patent that Mr.
`Vazquez co-invented, quoted above]?
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`A: I cannot say now a definition, but to me, the value is
`anything that is providing an information of position in
`the depth dimension.
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`…
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`Q. Is the depth dimension a third dimension?
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`A. . . . [T]he depth dimension is a third dimension in
`opposition to X and Y, which is two dimensional space.
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`18
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`Ex. 1030 at 24:12-25:9 (objeections ommitted); see
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`id. at 22:112-24:9
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`(similarr admissionn regardingg “depth vaalue”). Buut of coursee, nowheree in the
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`‘081/’6770 Patents is there anny discussiion of a “deepth valuee” or distannce of obje
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`cts,
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`and neitther Mr. VVazquez norr Legend ccan point too any suchh disclosuree. See, e.gg.,
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`Ex. 10440 at 80:14-81:10 (In his “compplete” answwer to the qquestion “wwhere in thhe
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`‘081 Paatent does iit discuss thhe virtual pposition off the objectts in the sccene?” Mr.
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`Vazquez did not ccite a singlee teaching..). So in o
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`rder to maaintain a claaim of
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`priority, Mr. Vazqquez had too change h
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`this IPR, wwhere he cclaimed in hhis
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`declarattion that a “depth vallue” in the
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`context off the ‘793 PPatent actuually includdes
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`“values for saturattion and/orr luminancce”:
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`Ex. 20224 at ¶ 51. When connfronted wiith this appparent disccrepancy att his
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`depositiion, Mr. Vazquez chaanged his sstory back::
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`A: ……[S]ince thhe ‘793 Paatent is conncerned witth
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`enhanncing the ddepth perceeption or thhe converssion2 of 2DD
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`to 3DD video, I wwould undeerstand, orr a person oof general
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`would undderstand deepth valuee to mean
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`skillss in the art
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`the reelative possition betwween objectts in the deepth
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`dimeension in thhe scene, aas perceiveed by the vviewer.
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`2 See errata.
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`19
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`Q: And is that depth value in Claim 2 of the ‘793 Patent
`the same depth value as found in the Patent on which you
`are a co-inventor?
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`A: I think that that depth value is not necessarily – is not
`inconsistent with that definition.
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`…
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`Q: … In both of those cases, is a depth value some
`reference to distance?
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`A: I would say, both cases make reference to a given
`distance, yes.
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`Ex. 1040 at 68:16-21, 145:22-146:2, and 148:17-20. Mr. Vazquez cannot be
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`trusted, and his declaration is just another example of how Legend’s claim
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`construction is built on nothing.
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`The term “depth parameter” is only used once outside of the claims of the
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`‘793 Patent, and the context makes clear that Legend’s construction is
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`unreasonably overbroad. The ‘793 Patent states:
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`FIG. 69 shows an anaglyph of the final depth enhanced
`second and last image frame viewable with Red/Blue 3-
`D glasses, note rotation of person's head, movement of
`person's hand and movement of crystal ball. The original
`two-dimensional image is now shown in three-
`dimensions as the masks have been moved/reshaped
`using the mask tracking/reshaping as described above
`and applying depth information to the masks in this
`subsequent frame from an image sequence. As described
`above, the operations for applying the depth parameter
`to a subsequent frame is performed using a general
`purpose computer having a central processing unit
`(CPU), memory, bus situated between the CPU and
`memory for example.
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`20
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`Ex. 1001 at 34:36-48. The only time the ‘793 Patent actually uses the term “depth
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`parameter,” it does so in explaining the process of creating 3D stereoscopic image
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`pairs, which are created by arranging objects at various depths in 3D space.
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`Legend seeks a construction that would allow a “depth parameter” to apply to
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`anything that can potentially be used to create a perceived depth, even changes in
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`color within a single 2D image, despite the fact that the terms “depth parameter,”
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`“depth value,” or “depth” are never offered in any such context. Legend’s
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`construction is simply not grounded in the facts. A “depth parameter” in the
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`context of the ‘793 Patent corresponds to three-dimensional positioning of objects
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`in the scene, which is simply not taught by the ‘081/’670 Patents.
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`III. CLAIMS 4-6 AND 16-18
`With respect to only Claims 4-6 and 16-18, Legend argues that the asserted
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`references do not teach the claim limitations. But the asserted references,
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`including Sullivan, do indeed teach the claim limitations. As background, the ‘793
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`Patent teaches the use of various “three-dimensional geometric depth shapes,” such
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`as generic heads, to recreate a 2D scene in virtual 3D, as shown, for example, in
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`Figure 59:
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`ze of thesee
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`ging the si, and changg, rotating,translating6-18 recite Claims 4-6 and 16
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`three-diimensionall geometricc depth shaapes so thaat they actuually align with the 22D
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`image thhey are tryying to recrreate.
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`PPrior art Suullivan doess the exactt same thinng. Sullivaan teaches
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`that “Imagge
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`operatioons can incclude imagge rotation, image scaaling, and iimage repoositioning.””
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`Ex. 10006 at 4:66-667. As Dr.. Forsyth teestified at hhis deposittion, whenn the imagee is
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`rotated, scaled, or repositionned, the corrrespondinng three-dimmensional
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`geometricc
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`depth shhapes are nnecessarilyy rotated, sccaled, or reepositionedd (respectiively) withh
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`respect to the imagge. Ex. 20021 at
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