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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Prime Focus Creative Services Canada Inc.,
`Petitioners,
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`v.
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`Legend3D, Inc.,
`Patent Owner.
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`Case No. IPR2016-01243
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`Patent No. 7,907,793
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO AMEND
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`Introduction ...................................................................................................... 1
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`Prime’s Speculations of Inequitable Conduct Cannot Form the Basis
`for Denying Legend’s Motion to Amend ........................................................ 1
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`III. The Amended Claims Do Not Constitute Double Patenting ........................... 1
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`IV. Legend Adequately Analyzed the Prior Art of Record, and Satisfied
`its Duty of Candor to the Board ....................................................................... 3
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`V.
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`The Amended Claims are Distinct Over the Prior Art Prime Relies
`Upon in Its Opposition .................................................................................... 4
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`A.
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`The Amended Claims are Distinct over Burt, Irani 96, Irani 98
`Odone, Szeliski, and Nielsen, Alone or in Combination With
`One Another .......................................................................................... 5
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`VI. Conclusion ....................................................................................................... 7
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Ex parte Davis
`80 USPQ 448 (Bd. App. 1948) ............................................................................. 2
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`In re Gray
`53 F.2d 520, 11 USPQ 255 (CCPA 1931) ............................................................ 2
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`Idle Free Systems, Inc. v. Bergstrom Inc.
`Case IPR2012-00027 ........................................................................................ 3, 4
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`Statutes
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`35 U.S. Code section103 ............................................................................................ 6
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`Other Authorities
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`U.S. Patent No. 4,984,072 .................................................................................. 4, 5, 6
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`I.
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`Introduction
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`Patent Owner submits this Reply to Petitioner’s Opposition (“Opposition,”
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`Paper 44) to Patent Owner’s Motion to Amend (“Motion,” Paper 41).
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`II.
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`Prime’s Speculations of Inequitable Conduct Cannot Form the Basis for
`Denying Legend’s Motion to Amend
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`Prime asserts that Legend is perpetuating inequitable conduct by
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`representing to the Board that the ‘793 patent can claim priority to its parents.
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`(Opposition, Paper 44 at 1.) Prime’s argument improperly treats as a foregone
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`conclusion that Legend intended to deceive the Patent Office when it failed to
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`identify the Passmore application in an IDS during prosecution of the ’793 patent.
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`But no such intent has been established, not in this proceeding nor in any other.
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`Indeed, Prime’s arguments amount to mere speculation and conjecture. Prime’s
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`request requires the Board to just take their word for it, and deny Legend’s Motion
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`because somehow Legend’s continued claim for priority to the parent applications
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`perpetuates an unproven inequitable conduct claim. Prime’s request is unavailing
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`and should be rejected.
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`III. The Amended Claims Do Not Constitute Double Patenting
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`Petitioner argues that because color “by definition consists of hue,
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`saturation, and luminance,” that the instant amendment clarifying that the “depth
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`parameter” is saturation or luminance (or both) somehow constitutes double
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`patenting over the “color parameter” limitation claimed in the ’081 and ’670 parent
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`patents. (Opposition, Paper 44 at 1-2.)
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`But Prime’s new position contradicts its own Petition. Prime already took
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`the position in its Petition that “a color parameter relates to the visible hue of an
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`object.” (Petition, Paper 1 at 10.) But “hue” is not a “depth parameter” the
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`amended ’793 claims are concerned with. Instead, the amended claims specifically
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`exclude “hue” (as well as many other parameters) from the “depth parameter”
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`limitation. The claims do this by using “consists of” as the operative transitional
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`phrase in this limitation, such that “depth parameter” is limited to saturation or
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`luminance or both. (See Motion, Paper 41 at 2; see also In re Gray, 53 F.2d 520,
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`11 USPQ 255 (CCPA 1931) (the transitional phrase “consisting of” excludes any
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`element, step, or ingredient not specified in the claim); Ex parte Davis, 80 USPQ
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`448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the
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`inclusion of materials other than those recited except for impurities ordinarily
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`associated therewith”). Even if Prime hadn’t already taken a position in conflict
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`with its current view, the amended claims’ focus on saturation and luminance, for
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`purposes of depth specifically, is clearly a patentable distinction over the claims as
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`set forth in the ’081 and ’670 patents. Legend thus contents that the amended
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`claims do not constitute double patenting as Prime suggests.
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`IV. Legend Adequately Analyzed the Prior Art of Record, and Satisfied its
`Duty of Candor to the Board
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`Prime asserts that Legend’s statement that it considered prior art known to
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`Patent Owner is “demonstrably false,” and that because Prime allegedly “fail[ed]
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`to address” certain prior art in the Motion itself, that Legend has somehow violated
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`its duty of candor to the Board. (Opposition, Paper 44 at 2.) Prime seems to think
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`that whenever Legend doesn’t view the prior art the same way Prime does, the
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`Board should sanction Legend. That’s not how these proceedings work, and
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`there’s no Rule to support such a reckless framework for sanctions. Legend is
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`entitled to its own view of the prior art, even if it’s different than Prime’s. And
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`Legend is certainly not under any obligation to satisfy Prime’s unfounded
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`interpretation of the Rules. Rather, Legend’s obligation is to abide by the law as
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`interpreted by the Courts and the Board – including precedential decisions relevant
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`to these proceedings as directed by the Board. Legend has met its obligations.
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`In particular, the Board previously directed Legend to Paper 26 in the Idle
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`Free case in advance of Legend filing its Motion. The Board in Idle Free stated
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`that: “[in a motion to amend] [t]he burden is … on the patent owner to show
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`patentable distinction over the prior art of record and also prior art known to the
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`patent owner. Some representation should be made about the specific technical
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`disclosure of the closest prior art known to the patent owner, and not just a
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`conclusory remark that no prior art known to the patent owner renders obvious the
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`proposed substitute claims.” (Idle Free Systems, Inc. v. Bergstrom Inc., Case
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`IPR2012-00027 at Paper 26, at 7.) Nowhere in Idle Free, nor anywhere in the
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`Rules, is there a requirement that the Patent Owner’s Motion to Amend flesh-out
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`all the details of all the prior art of record. Nor is there any requirement the Patent
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`Owner agree with the Petitioner’s view of the prior art or else be subject to
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`sanction. Such rules would be senseless. Legend properly satisfied met its
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`obligations under the Rules, and the fact that Prime’s counsel has a different view
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`of the prior art (which is wholly unsupported by any expert opinion) is no reason to
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`sanction Legend or deny its Motion to Amend.
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`V. The Amended Claims are Distinct Over the Prior Art Prime Relies
`Upon in Its Opposition
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`Prime argues that the amended claims are not distinct over the prior art of
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`record. Prime first points to U.S. Patent No. 4,984,072, and makes the wildly
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`erroneous and baseless assertion that “Legend did not actually consider the prior
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`art known to it,” and concludes invariably that that the ’072 should have been
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`specifically addressed in Legend’s motion. (Opposition, Paper 44 at 4-5.)
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`As the last record owner of the ’072 patent, Legend has been aware of and
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`most certainly considered the ’072 patent for purposes of this proceeding.
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`Furthermore and moreover, not only did Legend cite the ’072 to the examiner
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`during prosecution, but the application itself actually discusses distinctions
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`between the ’793 patent and two earlier filed patents including the ’072 patent. See
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`(US Pat. No. 7,907,793, Ex. 1001 at 1:26-2:16). Legend properly reviewed and
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`found it to be unnecessary to detail the teachings of the ’072 – as well as many
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`other prior art references – in the body of its Motion to Amend. And Legend
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`certainly did not violate its duty of candor to the Board by choosing not to rehash
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`an old reference it believes has little bearing on the patentability of the as-amended
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`claims.
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`A. The Amended Claims are Distinct over Burt, Irani 96, Irani 98
`Odone, Szeliski, and Nielsen, Alone or in Combination With One
`Another
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`In addition to the ’072 patent, Prime argues that Burt (US Pat. No.
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`5,649,032), Irani 96 (Efficient Representations of Video Sequences and Their
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`Applications, Signal Processing: Image Communication 8 (1996)), Irani 98 (Video
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`Indexing Based on Mosaic Representations, Proceedings of the IEEE, Vol. 86, No.
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`5, May 1998), Odone (Robust motion Segmentation for Content-based Video
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`Coding, RIAO ’00 Content-Based Multimedia Information Access-Volume 1, pp
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`594-601, (2000)), Szeliski (US Pat. No. 6,157,747), and Nielsen (Randomized
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`Adaptive Algorithms for Mosaicing Systems, IEICE Trans. Inf. & Sys., July 2000),
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`alone or in combination with one another, render the amended claims invalid.
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`Legend disagrees.
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`For all the analysis and interpretation of the foregoing prior art that Prime
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`sets forth in its Opposition, not one of their arguments is properly supported by an
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`expert opinion. (Opposition, Paper 44.) Prime makes sweeping statements about
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`what “one of ordinary skill in the art would have understood and fully
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`expected…,” and that “one of ordinary skill in the art would recognize…” certain
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`teachings, and even argues that “there is a strong motivation to combine” various
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`references in brand new combinations, all without any corroborative support from
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`an expert. Attorney argument of this nature is improper and unavailing.
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`Legend stands by its original Motion. Legend maintains that the amended
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`claims of the ’793 patent are patentably distinct over the prior art of record,
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`including in consideration of the ’072 patent, Burt, Irani 96, Irani 98, Odone,
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`Szeliski, and Nielsen references, whether considered alone or in combination with
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`one another for purposes of 35 USC §103.
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`IPR2016-01243
`PATENT OWNER’S REPLY ISO ITS MOTION TO AMEND
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`VI. Conclusion
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`For the reasons above, Legend maintains its original request in the Motion to
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`Amend. In particular, for each original claim the Board finds unpatentable, Patent
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`Owner respectfully requests that the Board grant the Motion to Amend and enter the
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`corresponding substitute claim proposed therein.
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`Respectfully submitted,
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`Dated: July 17, 2017
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`By: /Daniel N. Yannuzzi/
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`Daniel N. Yannuzzi, Lead Counsel
`Reg. No. 36,727
`Trevor J. Quist, Back-up Counsel
`Reg. No. 75,856
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`Sheppard Mullin Richter &
`Hampton LLP
`12275 El Camino Real
`San Diego, 92130
`Tel: 858-720-8900
`Fax: 858-509-3691
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`Counsel for Patent Owner
`Legend3D, Inc.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on July 17, 2017, a
`copy of the foregoing PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO AMEND was filed through the Patent Review Processing System
`and was served via E-MAIL on the Patent Owner at the following correspondence
`address provided by counsel of record for the Patent Owner pursuant to 37 C.F.R.
`§ 42.8(b)(4):
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`Josh Glucoft, Esq.
`jglucoft@irell.com
`primefocusipr@irell.com
`Irell & Manella, LLP
`1800 Avenue of the stars, Suite 900
`Los Angeles, CA 90067 – 4276
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`Dated: July 17, 2017
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`/s/ Kristina Grauer
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
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