IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Review of:
`U.S. Patent No. 7,907,793
`Issued: March 15, 2011
`Application No.: 12/542,498
`Filing Date: 8/17/2009
`Priority Date: 5/4/2001
`
`For: IMAGE SEQUENCE DEPTH ENHANCEMENT SYSTEM AND
`METHOD
`Filed via Patent Trial Appeal Board End-to-End (PTAB-E2E) system
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`Prime Focus Creative Services Canada Inc.,
`Petitioner
`v.
`Legend3D, Inc.,
`Patent Owner
`_____________
`
`Case IPR2016-01243
`_____________
`
`
`PATENT OWNER PRELIMINARY RESPONSE FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,907,793
`PURSUANT TO 37 C.F.R. § 42.107
`
`
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`

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`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED ................................. 1
`1. STATEMENT OF PRECISE RELIEF REQUESTED ............................... .. 1
`II. REQUIREMENTS FOR PATENT OWNER PRELIMINARY
`II. REQUIREMENTS FOR PATENT OWNER PRELIMINARY
`RESPONSE FOR INTER PARTES REVIEW ..................................................... 1
`RESPONSE FOR INTER PARTES REVIEW ................................................... .. 1
`A. STATUTORY REQUIREMENTS ............................................................................ 1
`A. STATUTORY REQUIREMENTS .......................................................................... .. 1
`III. INTRODUCTION ........................................................................................... 2
`A. PATENT OWNER LEGEND3D ............................................................................ 2
`B. THE ‘793 PATENT ............................................................................................. 2
`C. BASIC COLOR AND DEPTH OVERVIEW .............................................................. 5
`IV. DEFICIENCIES IN THE PETITION ........................................................ 15
`A. ERRONEOUS ASSERTION OF NON-ENTITLEMENT TO PRIORITY ......................... 15
`B. ERRONEOUS ASSERTION THAT ‘793 PATENT IS DIRECTED AT 2D TO 3D
`CONVERSION .................................................................................................. 19
`C. ERRONEOUS ASSERTION THAT NEW MATTER IS CLAIMED ................................ 23
`D. ERRONEOUS CONSTRUCTIONS FOR COLOR PARAMETER AND DEPTH PARAMETER
` ...................................................................................................................... 24
`E. IRRELEVANT MOTIVATION TO COMBINE ASSERTIONS ...................................... 27
`V. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 27
`VI. CLAIM CONSTRUCTION ......................................................................... 28
`A. APPLICABLE LAW ........................................................................................... 29
`B. CONSTRUCTION OF CLAIM TERMS .................................................................. 29
`VII. PROPOSED GROUNDS OF CHALLENGE ............................................ 30
`A. GROUNDS 1 THROUGH 8 FAIL ......................................................................... 31
`VIII. CONCLUSION ............................................................................................ 65
`
`III. INTRODUCTION ......................................................................................... .. 2
`
`A. PATENT OWNER LEGEND3D .......................................................................... .. 2
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`B. THE ‘793 PATENT ........................................................................................... .. 2
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`C. BASIC COLOR AND DEPTH OVERVIEW ............................................................ .. 5
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`IV. DEFICIENCIES IN THE PETITION ...................................................... .. 15
`
`A. ERRONEOUS ASSERTION OF NON-ENTITLEMENT TO PRIORITY ....................... .. 15
`
`B. ERRONEOUS ASSERTION THAT ‘793 PATENT IS DIRECTED AT 2D TO 3D
`
`CONVERSION ................................................................................................ .. 19
`
`C. ERRONEOUS ASSERTION THAT NEW MATTER IS CLAIMED .............................. .. 23
`
`D. ERRONEOUS CONSTRUCTIONS FOR COLOR PARAMETER AND DEPTH PARAMETER
`
`.................................................................................................................... .. 24
`
`E.
`
`IRRELEVANT MOTIVATION TO COMBINE AS SERTIONS .................................... .. 27
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`V. LEVEL OF ORDINARY SKILL IN THE ART ....................................... .. 27
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`VI. CLAIM CONSTRUCTION ....................................................................... .. 28
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`A. APPLICABLE LAW ......................................................................................... .. 29
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`B. CONSTRUCTION OF CLAIM TERMS ................................................................ .. 29
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`VII. PROPOSED GROUNDS OF CHALLENGE .......................................... .. 30
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`A. GROUNDS 1 THROUGH 8 FAIL ....................................................................... .. 31
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`VIII. CONCLUSION .......................................................................................... .. 65
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`2015
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`2016
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`EXHIBIT LIST
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`U.S. Patent No. 8,922,628 (Petitioner’s ‘628 Patent)
`
`Article: Jonathan Sachs, Digital Image Basics, Digital Light & Color,
`1996-1999.
`
`Article: Paul Bourke, HSL colour space, June 2000
`
`Archived web page: ColorModels.html, available at
`http://cs.brown.edu/courses/cs092/VA10/HTML/ColorModels.html, from
`Brown University course CS092, archived Jan 24, 2000.
`
`Book: Lenny Lipton, Foundations of the Stereoscopic Cinema – A Study
`in Depth, 1982.
`
`Article: Dorothy A. Kleffner and V. S. Ramachandran, On the Perception
`of Shape from Shading, Perception & Psychophysics 1992, 52 (1), 18-36.
`
`Book: Windows API Guide, Volume 3, Version d.1 for the MS-DOS and
`PC-DOS operating System, Chapter 1, Borland International, 1992
`
`Archived web page: GIMP core_blend_tool.html, available at
`http://www.gimp.org/core_blend_tool.html, archived August 17, 2000.
`
`Archived web page: GIMP transforms.html, available at
`http://manual.gimp.org/manual/GUM/transforms.html, archived March 5,
`2001.
`
`Book: Adobe Photoshop 6.0 User Guide, Adobe Systems Incorporated,
`2000.
`
`U.S. Patent No. 8,396,328 (First child Patent to the ‘793 Patent)
`
`Internet Archive Affidavit for Exhibits 2008, 2012 and 2013
`
`ii
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`

`
`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Board should not institute inter partes review (IPR) on claims 1-20 of
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`
`
`I.
`
`
`U.S. Patent No. 7,907,793 (“ ‘793 Patent,” Ex. 1001) because petitioner Prime
`
`Focus Creative Services Canada Inc. (“Petitioner”) has not met its burden of
`
`showing it has a reasonable likelihood of prevailing on at least one claim with
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`respect to any of its proposed grounds of unpatentability. Specifically, Petitioner
`
`has failed to apply the broadest reasonable construction in light of the specification
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`for “depth parameter”, has read limitations from the specification into the claims
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`that are not claimed, and has ignored support in U.S. Patent No. 7,181,081 (‘081)
`
`and U.S. Patent No. 7,333,670 (‘670) (hereinafter “ ‘793 Parent Patents”) to which
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`the ‘793 Patent claims priority for claimed subject matter. Thus, Petitioner has
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`erred in asserting that the ‘793 Patent is not entitled to the ‘793 Parent Patents
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`priority filing dates. As detailed herein, without the ‘793 Parent Patents to rely on
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`as prior art, all eight grounds for obviousness in the petition fail.
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`REQUIREMENTS FOR PATENT OWNER PRELIMINARY
`II.
`RESPONSE FOR INTER PARTES REVIEW
`
`
`A.
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`Statutory Requirements
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`
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`Patent Owner certifies that the instant response contains 13611 words, as
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`counted by the word-processing program used to generate this Response, where
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`such word count excludes the table of contents, table of authorities, certificate of
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`service, exhibit list, and this section on word count. See 37 C.F.R. § 42.24.
`1
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`INTRODUCTION
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`A.
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`Patent Owner Legend3D
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`Patent Owner Legend3D, Inc., (hereinafter Legend3D) is an innovator at the
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`III.
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`forefront of movie effects and virtual reality technology. The subject of this
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`petition, namely the ‘793 Patent (Ex. 1001), is one of 39 patents in Legend3D’s
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`patent portfolio, which includes 30 U.S. patents and 9 foreign patents awarded to
`
`Legend3D and its predecessor Legend Films, Inc. Legend3D has been setting and
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`applying color and depth to 2D movies since at least 2001, and to 3D stereoscopic
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`movies since at least 2009, using the same novel technology for creating, moving,
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`and reshaping masks developed before entering the 3D stereoscopic movie effects
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`market. Other patents in the Legend3D portfolio are directed at masking
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`technology that initially was used for applying color and depth within masked
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`areas as well as 2D to 3D conversion, real-time editing of stereoscopic 3D movies,
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`virtual reality, importing computer generated elements, gap fill in stereoscopic
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`depth conversion, project management for movie projects, including project
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`control, disk savings, grouping of items for use across scenes for consistency, and
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`animation, for example.
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`B.
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`The ‘793 Patent
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`Petitioner asserts that the ‘793 Parent Patents are prior art to the ‘793 Patent
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`and that the ‘793 Patent is not entitled to the priority date of the ‘793 Parent
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`Patents. Petitioner bases this assertion on an argument that the ‘793 Patent claims
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`describe setting a “depth parameter,” and that the ‘793 Parent Patents provide no
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`support for a “depth parameter.” This argument by Petitioner is incorrect. The
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`‘793 Parent Patents do indeed support setting a “depth parameter,” because they
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`enable setting a depth parameter using an “HSL [hue, saturation, and luminance]
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`color space model”1 to affect both color and depth. Ex. 1003, 9:1-8. Petitioner
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`asserts that color and depth are completely distinct concepts (Pet. p. 10):
`
`A “color” parameter and a “depth” parameter are, of course, very different. See
`Ex. 1009, Dr. Forsyth Decl. at ¶ 39. A “color” parameter relates to the visible
`hue of an object while a “depth” parameter relates to the perceived distance of
`an object from the camera—entirely distinct, non-overlapping concepts.
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`
`
`This baseless assertion by Petitioner errs in at least three ways: First,
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`Petitioner has construed a “color parameter” as a hue. This is an overly narrow
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`construction that is contradicted by the specifications of the ‘793 Patent and the
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`‘793 Parent Patents. Rather, a “color parameter” as defined in these patents may
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`affect any aspect of color including hue, (Red, Yellow, etc.), saturation (color
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`intensity, how vibrant or grey), or luminance (brightness) for any object in a scene,
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`not simply the hue. The ‘793 Patent and the ‘793 Parent Patents all disclose use of
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`an HSL color model, e.g., ‘081 Patent, Ex. 1003 9:1-8. Second, Petitioner’s
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`
`
` All emphasizing herein is added unless otherwise noted.
`3
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`assertion that depth and color are “entirely distinct, non-overlapping concepts”
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`contradicts centuries of knowledge of techniques that generate depth effects using
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`color parameters. “Leonardo codified the monocular depth cues, … which had
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`been discovered, or invented if you like, by Renaissance painters.” Ex. 2009, p. 19,
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`¶¶ 3-4. Third, if a depth parameter was limited to the perceived distance of an
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`object from the camera, then all objects would have to appear flat, instead of
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`having differing depths within each object as a person of ordinary skill in the art
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`will recognize, including haze. The example below shows how color parameters
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`may be used as depth parameters. The left figure below is a 2D image with a flat
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`circle. An artist modifies the luminance (brightness) across the flat circle, setting
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`the luminance with an HSL color editor (middle figure), e.g., using the “Gimp”
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`Gradient Radial transform, Ex. 2012, p. 4. Applying this luminance to the flat
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`circle results in the right figure, where the upper left is bright and the lower right is
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`dark. Thus, a change to a color parameter (luminance) results in a depth effect:
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`the flat disc now appears to be a 3D sphere with depth that varies within the object.
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`This ability to use color parameters (such as luminance as shown above to
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`
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`affect shadows and lighting) as depth parameters is even described in Petitioner’s
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`sole patent, U.S. 8,922,628 (the “ ‘628 Patent”) issued in 2014. Ex. 2005, 35:35-37.
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`…the nature of 2D film-making is to create monoscopic depth cues such as
`haze, shadow and lighting (not “flat” surfaces) to make the scene more
`visually interesting…
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`If a “depth parameter” was construed to be a “perceived distance of an
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`object from the camera” then there would be no depth within objects, as shown
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`above and within haze as detailed below, as a person of skill in the art will
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`recognize. This would result in scenes having only flat objects at different
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`distances from the camera. This is inconsistent with Legend3D’s Patents and
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`Petitioner’s own ‘628 Patent. Furthermore, Petitioner states that “it does not
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`matter what level of ordinary skill in the art is applicable”, petition p. 18, l. 5, and
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`hence all assertions by Patent Owner herein regarding a person of ordinary skill in
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`the art, including the statement above in this paragraph are acceptable to Petitioner.
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`C.
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`Basic Color and Depth Overview
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`The ‘793 Patent and the ‘793 Parent Patents enable an artist to manipulate
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`various color parameters, which may include, for example, any combination of hue,
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`saturation, and/or luminance. As illustrated above and discussed in detail below,
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`color parameters may be used as depth parameters, since aspects of color may be
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`
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`altered to affect depth perception. Thus, the ‘793 Patent claims for “depth
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`parameters” are fully supported by the ‘793 Parent Patents, eliminating Petitioner’s
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`main argument.
`
`1. Color as Hue, Saturation and Luminance, Rather Than Just Hue
`
`Color may be described using various “color spaces:”
`
`A color space is a mathematical system for representing colors. Since
`it takes at least three independent measurements to determine a color,
`most color spaces are three-dimensional. Many different color spaces
`have been created over the years in an effort to categorize the full
`gamut of possible colors according to different characteristics. (Ex.
`2006, p. 10, 1st Paragraph)
`
`A particular color space that is described in the ‘793 Patent and the ‘793
`
`Parent Patents is the “HSL Color Space,” which has three components for each
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`color: hue, saturation, and luminance. Bourke, Ex. 2007, describes the HSL Color
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`Space as follows:
`
`The HSL colour space has three coordinates: hue, saturation, and
`lightness (sometimes luminance) respectively, it is sometimes referred
`to as HLS. The hue is an angle from 0 to 360 degrees, typically 0 is
`red, 60 degrees yellow, 120 degrees green, 180 degrees cyan, 240
`degrees blue, and 300 degrees magenta. Saturation typically ranges
`from 0 to 1 (sometimes 0 to 100%) and defines how grey the colour is,
`0 indicates grey and 1 is the pure primary colour. Lightness is
`intuitively what it's name indicates, varying the lightness reduces the
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`values of the primary colours while keeping them in the same ratio.
`(Ex. 2007, p. 10, 1st Paragraph)
`
`Sachs, Ex. 2006, describes the hue, saturation, and luminance components of
`
`
`
`the HSL color space as follows:
`
`Hue
`The hue of a color identifies what is commonly called “color”. For
`example, all reds have a similar hue value whether they are light, dark,
`intense, or pastel. (Ex. 2006, p. 7, 2nd Paragraph)
`Saturation
`The saturation of a color identifies how pure or intense the color is. A
`fully saturated color is deep and brilliant—as the saturation decreases,
`the color gets paler and more washed out until it eventually fades to
`neutral. (Ex. 2006, p. 7, 3rd Paragraph)
`Luminance
`The luminance of a color is a measure of its perceived brightness. The
`computation of luminance takes into account the fact that the human
`eye is far more sensitive to certain colors (like yellow-green) than to
`others (like blue). (Ex. 2006, p. 7, 5th Paragraph)
`
`The “HSL color space” is manipulated with ubiquitous “color chooser” tools,
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`which enable an artist to alter any combination of the three parameters of color in
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`images by setting hue, saturation, and/or luminance values. In particular, by
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`altering any or all of these values, an artist may affect depth by applying or
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`otherwise altering haze, shadow, and lighting as detailed below. Thus, from the
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`
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`‘793 Parent Patents’ priority dates, an artist has always had the capability of setting
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`and applying color parameters to affect depth.
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`For example, Ex. 2008 shows an HSL color chooser from Jan. 24, 2000 on
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`the WayBack Machine, before the ‘793 Parent Patents filing dates, that is still
`
`available at http://cs.brown.edu/courses/cs092/VA10/HTML/ColorModels.html:
`
`
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`
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`Ex. 2008 is an archived web page (See Affidavit in Ex. 2016) that was
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`developed for a computer science course at Brown University. The Color Chooser
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`applet referred to in the web page above at the bottom of the page is still active on
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`the course website for public use. Using this color chooser applet, we can illustrate
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`the effect of changing saturation and luminance. To demonstrate, a hue of Red
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`
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`with maximum saturation is selected at the outer edge of the circle:
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`By moving the selection towards the center of the circle, the saturation of the
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`color is reduced, effectively making the red less vibrant and more grey:
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`The luminance of the red can then be increased by dragging the “slice”
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`
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`through the double cone upwards, which lightens the shade of red:
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`
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`These examples illustrate that a perceived color is affected by saturation and
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`luminance, and not just by the “hue” of the color as asserted by Petitioner.
`
`To be clear, a “color” in the HSL color space requires three parameters,
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`namely hue, saturation, and luminance. Many other color spaces exist and the
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`claims of the ‘793 Patent and the ‘793 Parent Patents are not limited to the HSL
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`color space, however this color space is an intuitive way to understand the ability
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`of the ‘793 Parent Patents and ‘793 Patent to affect not only hue, but also to affect
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`depth by altering saturation and luminance to apply haze, shadow, and lighting.
`
`2.
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`Setting a Color Parameter to Achieve a Depth Effect
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`10
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`As stated previously, the use of color parameters (which include at least
`
`
`
`saturation and luminance) to achieve depth effects (known as “depth cues” in the
`
`art) has been known for centuries by artists. As shown above, luminance affects
`
`depth by affecting the shadow and lighting on a sphere, and thus Petitioner’s own
`
`‘628 Patent acknowledges that a color parameter such as luminance affects depth:
`
`Second, the nature of 2D film-making is to create monoscopic depth cues
`such as haze, shadow and lighting (not 'flat' surfaces) to make the scene
`more visually interesting, … (Ex. 2005, 35:35-37)
`
`Saturation will also be shown below to affect depth by applying or altering
`
`haze. The following two illustrative references show examples of using various
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`color parameters to achieve depth effects.
`
`a. Book on Depth in Cinema Describing Depth Effects Using
`Saturation and Luminance to affect Haze, Shadow and Light
`
`Lipton, Ex. 2009, in the book titled “Foundations of the Stereoscopic
`
`
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`Cinema – A Study in Depth”, states that “planar” (monoscopic) films contain many
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`depth cues, in agreement with the Petitioner’s statement referenced above:
`
`All filmmaking is three-dimensional in the sense that motion pictures
`provide many cues to depth that also help us perceive the visual world.
`Certainly planar films depict a three-dimensional world, and observers
`rarely feel that anything is missing. Space, as it is depicted, seems full,
`and the images appear to be real and lifelike. (Ex. 2009, Chapter 2, p.
`53, 2nd Paragraph)
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`This book describes and illustrates one such depth cue: the aerial
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`
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`perspective depth cue that causes hazy objects to appear to be further away:
`
`Aerial Perspective. At this moment I am looking out across San
`Francisco Bay to Mount Tamalpais. It is a very hazy day, and the
`mountain is barely visible in the glare of the haze illuminated by the
`setting sun. The haze intervening between me and the mountain makes it
`look far away. Atmospheric haze provides the depth cue of aerial
`perspective. (Ex. 2009, p. 56, 1st Paragraph)
`
`Figure 2.4 of the book illustrates aerial perspective with the following image,
`
`in which the background objects have greater luminance to make them appear
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`further away:
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`The above image is black-and-white; a color image shows both greater
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`
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`luminance and lower saturation for background objects, i.e., more grey and less
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`vivid colors as a person of ordinary skill in the art will recognize when viewing a
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`photograph such as the one below.
`
`
`
`Ex. 2009 also describes the use of light and shade to create depth:
`
`Light and Shade. Cast shadows provide an effective depth cue, as does
`light coming from one or more directions modeling an object. (Ex.
`2009, p. 56, 2nd Paragraph)
`
`Figure 2.5 of the book illustrates the depth cues from light and shade:
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`Light and shade effects are created by variations in luminance; for example,
`
`
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`in the left shape above the bottom face of the object has low luminance (it is black),
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`while in the right shape the top face of the object has low luminance.
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`
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`
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`b. Journal Article Showing Depth Effects Using Shading
`
`
`The image above is a 2D monoscopic image, yet shows depth as bumps and
`
`
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`indentations using shadow and lighting, i.e., luminance independent of hue, and
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`thus the 2D image portrays depth. Ex. 2010 p. 20:
`
`Figure 3. This computer-generated photograph demonstrates that the
`visual system has a built-in "assumption" that the light source is shining
`from above. Note that the depth in these displays is conveyed
`exclusively through shading, with no other depth cues present.
`
` Color Parameters Are Not Always Depth Parameters
`
`3.
`
`Although a color parameter may be used as a depth parameter, not all
`
`changes to color parameters affect perceived depth. For example, changing the
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`hue of a red sphere to green does not change the perceived depth in the sphere.
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`
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`They are both spheres instead of flat objects as one skilled in the art will recognize:
`
`
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`
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`Hence the claim scope of the ‘793 Patent and its ‘793 Parent Patents differ.
`
`The ‘793 Parent Patents claims are directed to setting color parameters, which may
`
`or may not affect depth perception. The ‘793 Patent claims specifically focus on
`
`those changes that affect depth perception, namely through setting and applying
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`saturation and luminance, e.g., in the HSL color space, as detailed further below.
`
`IV. Deficiencies in the Petition
`
`
`A.
`
`Erroneous assertion of non-entitlement to priority
`
`
`
`The petition can be dismissed for a number of reasons. Foremost, the ‘793
`
`Parent Patents and the ‘793 Patent disclose setting depth parameters, since, as
`
`discussed above, color parameters such as saturation and luminance serve as depth
`
`parameters as a person of ordinary skill in the art will recognize. Thus, the ‘793
`
`Patent is entitled to priority based on the ‘793 Parent Patents and they are simply
`
`not prior art. Specifically, as admitted by Petitioner, the ‘793 Parent Patents
`
`provide enabling disclosure for use of an “HSL color space” in the petition,
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`meaning that Petitioner acknowledges that “color” has three components, namely
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`
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`H, S and L, Hue, Saturation and Luminance. Petition at p. 24, ll. 2-3:
`
`Additionally, the ‘081 Patent also expressly teaches: “the designer
`masks features . . . and assigns color to them using an HSL color
`space model
`
`In contrast, Petitioner fails to acknowledge in its petition that color
`
`parameters may serve as depth parameters, for example by setting and applying
`
`saturation and luminance to affect haze, shadow, and lighting. However, again,
`
`Petitioner’s own ‘628 Patent agrees with Patent Owner’s position that 2D images
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`having haze, shadow, and lighting portray depth. Ex. 2005, Col. 35, ll. 35-37.
`
`A person of ordinary skill in the art will recognize that for a particular object
`
`in an image, the HSL color space enables setting any combination of hue,
`
`saturation, or luminance to provide different effects, including depth effects. To
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`this end, it is settled that matter disclosed in the parent application is entitled to the
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`benefit of the filing date of the parent application. (Waldemar Link, GmbH & Co.
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`v. Osteonics Corp. (Fed. Cir. 1994) 32 F.3d 556, 558) Also, matter added that is
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`deemed inherent in the original application is not “new matter” and is entitled to
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`the filing date of the parent patent. (Kennecott Corp. v. Kyocera International, Inc.
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`(Fed. Cir. 1987) 835 F.2d 1419, 1422-1423; In re Lange (C.C.P.A. 1981) 644 F.2d
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`856, 863-864; see also Locklin v. Switzer Bros. (9th Cir. 1961) 299 F.2d 160, 167)
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`Here, since the ‘793 Parent Patents enable use of the HSL color space, a
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`person of ordinary skill in the art will recognize that depth parameters, such as
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`saturation and luminance, is not “new matter” in the ‘793 Patent. This is so
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`because—and like Kennecott Corp., supra, 835 F.2d 1419, 1421-1422, Petitioner
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`admits that (ante)—the ‘793 Patent includes the HSL color model subject matter
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`from the ‘793 Parent Patents, and it therefore properly claims priority to, and
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`incorporates by reference, the ‘793 Parent Patents. Accordingly, the ‘793 Patent is
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`entitled to its earliest parent’s filing date. Ex. 1003, ‘081 Patent 9:1-8, Ex. 1004,
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`‘793 Patent 6:14-20:
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`Historical reference, studio archives and film analysis provides the
`designer with color references. Using an input device such as a mouse,
`the designer masks features in a selected single frame containing a
`plurality of pixels and assigns color to them using an HSL color space
`model based on creative considerations and the grayscale and
`luminance distribution underlying each mask.
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`More broadly, it has long been the law that an inventor may disclose and
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`then later claim original subject matter. (See generally General Talking Pictures
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`Corp. v. Western Electric Co. (1938) 304 U.S. 175, 182-183) Law and policy
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`liberally authorize the filing of CIP applications for a number of reasons, including
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`to provide a vehicle for prosecution of non-elected claims. (Paperless Accounting,
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`Inc. v. Bay Area Rapid Transit System (Fed. Cir. 1986) 804 F.2d 659, 663) Of
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`course, and contrary to Petitioner’s suggestion, the mere filing of a CIP with
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`additional matter or revised claims is not of itself an admission that the matter is
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`“new” or that the original application was legally insufficient to support the claim.
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`(Id. at 664) This is a case in point.
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`The typical situation where these types of arguments are made is when the
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`inventor attempts to broaden claims during prosecution based on competitor
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`activity. (See, e.g., Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir.
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`2011) 636 F.3d 1341, 1346-1347) In this case, however, the ‘793 Patent captures
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`less subject matter than the ‘793 Parent Patents as not all settings of color
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`parameters affect depth as described above (see III.C.3 above) and therefore it is
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`more akin to cases like Acme Highway Products Corp. v. D.S. Brown Co. (6th Cir.
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`1970) 431 F.2d 1074, 1077-1082, where priority was maintained by virtue of the
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`parent application. (See also Locklin v. Switzer Bros., supra, 299 F.2d 160, 167)
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` In this light, Petitioner’s reliance on In re Chu (Fed. Cir. 1995) 66 F.3d 292
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`is misplaced. As explained, color as referred to in the ‘793 Parent Patents, and as
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`would be understood by one of ordinary skill in the art after review of the
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`specifications, includes the subset of saturation and luminance (HSL) and this
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`subset can be used to create “depth cues” such that “depth” is a concomitant of
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`“color” as understood in the specifications of the ‘793 Parent Patents and the ‘793
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`Patent. In other words, based on the specifications, saturation and luminance are
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`expressly a part of color (HSL) as disclosed by the specifications. (See Atofina v.
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`Great Lakes Chemical Corp. (Fed. Cir. 2006) 441 F.3d 991, 999 [a very small
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`genus can be a disclosure of each species within the genus]) Therefore, any claim
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`of obviousness is of no import given that this aspect of the ‘793 Patent (“depth”
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`based on “saturation and luminance”) is supported by the ‘793 Parent Patents
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`(HSL) and priority is maintained between them.
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`Erroneous assertion that ‘793 Patent is directed at 2D to 3D
`B.
`conversion
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`The petition diverges from the actual issued ‘793 Patent claims and into
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`unclaimed 2D to 3D conversion at p. 5, “a visual artist often begins the conversion
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`process by determining the depth of each object”. Additionally, Petitioner asserts
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`at p. 5, 1st full paragraph, that “The ‘793 Patent is directed to converting movies
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`from 2D to 3D more efficiently”. Not so. Virtually the entire rest of the petition is
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`focused on asserting that the ‘793 Patent is only capable of being used for
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`stereoscopic depth conversion projects, when none of the additional required steps
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`in a 2D to 3D conversion process are claimed in the ‘793 Patent as a person of
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`ordinary skill in the art will recognize. Hence, the petition assertion regarding 2D
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`to 3D conversion is in error with respect to the actual ‘793 Patent claims and
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`should be disregarded as detailed below. Specifically, the ‘793 Patent does not
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`claim any new matter related to 2D to 3D conversion, such as creation of missing
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`background information (a.k.a. gap fill) or generation of left and right stereoscopic
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`viewpoints, or anaglyphs for 3D viewing with red/blue glasses. The ‘793 Patent is
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`Patent Owner Preliminary Response for Inter Partes Review of USPN 7,907,793
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`fully enabled to alter depth in images, as originally disclosed in the ‘793 Parent
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`Patents as detailed above. The ‘793 Patent claims are directed at applying depth
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`parameters, e.g., to make changes to alter at least saturation and luminance to
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`affect at least haze, lighting, and shading as described above, in combination with
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`the novel limitations of composite background creation and/or creating, moving,
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`and reshaping masks for objects in the scene. These limitations are all independent
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`of 2D to 3D conversion as a person of skill in the art will recognize.
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`Although the ‘793 Patent specification include