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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Prime Focus Creative Services Canada Inc.,
`Petitioners,
`
`v.
`
`Legend3D, Inc.,
`Patent Owner.
`
`
`
`
`Case No. IPR2016-01243
`
`Patent No. 7,907,793
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO AMEND
`
`
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`

`

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