`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner
`____________________
`
`CASE IPR2017-00336
`Patent No. 6,989,293
`____________________
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES LLC’S
`RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`
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`
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`TABLE OF CONTENTS
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`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Constitutionality of Inter Partes Review ........................................................ 3
`
`III. The Examiner Considered Exhibit 1005 (Pirim WO99/36893) During
`Prosecution of the ’293 Patent ......................................................................... 3
`
`IV. Overview of the ’293 Patent and Comparison with Pirim Reference ............. 5
`
`A.
`
`Person of Ordinary Skill in the Art .....................................................13
`
`B.
`
`Claim Construction..............................................................................13
`
`1. “an input multiplexer adapted to receive data describing one or
`more parameters of the event being detected, and to output data
`describing a selected one of the one or more parameters in
`response to a selection signal” (Claim 22) ..................................14
`
`V.
`
`Legal Standards ............................................................................................. 19
`
`VI. Claim 22 Is Not Unpatentable as Obvious over Pirim .................................. 22
`
`A.
`
`B.
`
`Pirim does not disclose “an input multiplexer adapted to receive
`data describing one or more parameters of the event being
`detected, and to output data describing a selected one of the one or
`more parameters in response to a selection signal” ............................22
`
`Claim 22 is not obvious over Pirim because a POSA would not
`have been motivated to modify the multiplexer of Pirim to be
`capable of receiving both “one” or “more” than one parameter .........24
`
`VII. Conclusion ..................................................................................................... 26
`
`
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`i
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
`Cases
`
`Apple Inc. v. Contentguard Holdings, Inc.,
` IPR2015-00442, Paper 9 (P.T.A.B. July 13, 2015) ............................... 19, 21, 22
`
`Google, Inc. v. Everymd.com LLC,
`IPR2014-00347, Paper 9 (P.T.A.B. May 22, 2014).............................................21
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966), ......................................................................................... 19, 20
`
`Grain Processing v. American-Maize Prods,
` 840 F.2d 902 (Fed. Cir. 1988) .............................................................................23
`
`In re Magnum Oil Tools Int’l.,
` 829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 19, 27
`
`In re NTP, Inc.,
` 654 F.3d 1279 (Fed. Cir. 2011) ...........................................................................23
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
` 688 F.3d 1342 (Fed. Cir. 2012) ...........................................................................20
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 22, 23
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
` CBM-2012-00003, Paper 7 (P.T.A.B. Nov. 26, 2012) ................................ 20, 21
`
`Ortho-McNeil Pharm. v. Mylan Labs,
` 520 F.3d 1358 (Fed. Cir. 2009) ...........................................................................23
`
`Proctor & Gamble Co. v. Teva Pharm. USA, Inc.,
` 566 F.3d 989 (Fed. Cir. 2009) ...................................................................... 21, 22
`
`Unigene Labs., Inc. v. Apotex, Inc.,
` 655 F.3d 1352 (Fed. Cir. 2011) ...........................................................................22
`
`Whole Space Indus Ltd.,
` IPR2015-00488, Paper 14 (P.T.A.B. July 24, 2015) ..........................................20
`
`ii
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`
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................18
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`iii
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 2009 Declaration of Dr. Peggy Agouris
`
`Ex. 2010 WO 98-05002; PCT/FR97/01354
`
`Ex. 2011
`
`Ex. 2012
`
`The Authoritative Dictionary of IEEE Standards Terms, 7th Ed.
`IEEE 100 (2000)
`Excerpt from Memorandum Opinion and Order on Claim
`Construction, Image Processing Techs. LLC v. Samsung Elecs. Co.,
`No. 2:16-CV-505 (E.D. Tex.) (D.I. 174)
`
`
`
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`
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`iv
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Patent Owner Image Processing Technologies LLC (“Patent Owner”) hereby
`
`submits this Patent Owner’s Response in case IPR2017-00336, in which the
`
`Board has instituted review (Paper 15) of only claim 22 of U.S. Patent No.
`
`6,989,293 (the “’293 patent”), based on a Petition (Paper 2) filed by Samsung
`
`Electronics Co. Ltd. and Samsung Electronics America, Inc. (collectively,
`
`“Petitioner”).
`
`The Board has instituted review of claim 22 on one ground, whether the
`
`claim is unpatentable as obvious under 103(a) over the Pirim PCT reference
`
`(WO 99/36893) (“Pirim”) (Exhibit 1005).
`
`I.
`
`INTRODUCTION
`
`Claim 22 is not unpatentable as obvious over Pirim. Pirim was before the
`
`examiner during prosecution of claim 22, which is an original claim, and the
`
`examiner approved claim 22 without amendment after considering Pirim during
`
`prosecution. See Ex. 1004 at 213, 241, 245 (originally filed as claim 21).
`
`Pirim does not teach or suggest an input multiplexer configured as required
`
`by claim 22. Claim 22 requires an input multiplexer that is configured to receive
`
`data for multiple parameters, and to select the parameter for which data will be
`
`passed, as explained in Section IV.B.1 below. Pirim, however, discloses a simple
`
`multiplexer that receives data for only a single parameter, and thus lacks the
`
`functionality required by claim 22. Simple two-to-one multiplexers for a single
`
`1
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`parameter such as those disclosed in the Pirim reference do not satisfy the
`
`limitations of claim 22. The ability to receive and process more than one
`
`parameter is not optional, but a mandatory element of claim 22 of the ’293 patent.
`
`Further, Petitioner provides no reasons why a POSA would have modified
`
`Pirim, and in fact a POSA would not have modified Pirim, to include the claimed
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`multiplexer. Unlike the ‘293 patent, Pirim discloses histogram formation units that
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`are each dedicated to processing a single parameter, and each connected to a single
`
`multiplexer that cannot be assigned to receive inputs from multiple parameters.
`
`Each multiplexer of Pirim is specific to this dedicated histogram formation unit
`
`structure. For example, each multiplexer of Pirim relies on a binary signal to
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`determine whether the single parameter data is passed to the histogram unit or
`
`instead whether a “counter” or “zero” signal is passed. A POSA would understand
`
`that the dedicated histogram formation units of Pirim would not be able to process
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`other parameters in any case, and so a POSA would not attempt to modify a
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`multiplexer of Pirim in the claimed manner.
`
`Therefore, Pirim does nor render claim 22 obvious and the Board should
`
`affirm the patentability of claim 22.1
`
`
`1 In the related district court litigation Image Processing Technologies LLC v.
`Samsung Electronics Corporation, No. 2:16-CV-0505-JRG (E.D. Tex.), the court
`construed the term “configured to determine the data in the histogram that satisfy a
`selected criterion” of element [22e] to mean “configured to determine the data
`already in the histogram.” Ex. 2012 at 29 (stamped page 5). Under the district
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`2
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`II. CONSTITUTIONALITY OF INTER PARTES REVIEW
`
`The Supreme Court recently granted certiorari in Oil States Energy Svcs. v.
`
`Greene’s Energy Group, No. 16-712 (cert. granted June 12, 2017) regarding the
`
`question of whether inter partes review proceedings violate the Constitution by
`
`extinguishing private property rights through a non-Article III forum without a
`
`jury. Accordingly, Patent Owner
`
`reserves
`
`the
`
`right
`
`to challenge
`
`the
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`constitutionality of this proceeding.
`
`III. THE EXAMINER CONSIDERED EXHIBIT 1005 (PIRIM
`WO99/36893) DURING PROSECUTION OF THE ’293 PATENT
`
`The examiner of the ’293 patent already considered Petitioner’s asserted
`
`prior art, Pirim, and granted the ’293 patent over Pirim. During prosecution of the
`
`application for the ’293 patent, Mr. Pirim cited Pirim (WO99/36893). Ex. 1004 at
`
`245 (Apr. 14, 2003 Information Disclosure Statement (IDS)). The examiner’s
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`initials appear besides Pirim WO 99/36893 (the first reference listed under
`
`“Foreign Patent Documents”, as shown below in an excerpt of the IDS document
`
`that is on file at the United States Patent and Trademark Office:
`
`
`
`court’s construction of “configured to determine the data in the histogram,” claim
`22 of the ’293 patent would not be unpatentable as obvious over Pirim. Patent
`Owner’s argument applies with equal force under this claim construction. Also,
`Pirim does not disclose, and Petitioner does not in its Petition argue that Pirim
`discloses element [22e] under the court’s construction. See Petition at 43–44, 51.
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`3
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`
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`
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`incorporates by
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`reference
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`Ex. 1004 at 243, 244, 245 (excerpts of IDS statement including selected portions of
`these pages of the exhibit, yellow highlighting added).
`
`specification
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`Further,
`
`the
`
`’293 patent
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`WO98/05002, which has a similar disclosure to Exhibit 1005. See Ex. 1001 at
`
`7:22–28. WO98/05002 is attached as Exhibit 2010. For example, Figure 11 of
`
`Exhibit 1005 (Pirim WO 99/36893) on which Petitioner relies, is nearly identical to
`
`Figure 11 of Exhibit 2010. Compare Ex. 1005 at Fig. 11 (page 74), and Ex. 2010
`
`at Fig. 11 (page 63).
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`The examiner considered Pirim (WO99/36893) and also the disclosures of
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`these other, similar Pirim patents and publications during prosecution of the ’293
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`patent. See, e.g., Ex. 1004 at 244–245 (June 14, 2001 and Apr. 14, 2003 IDSs with
`
`examiner’s initials by WO98/05002 and WO99/36893).
`
`IV. OVERVIEW OF THE ’293 PATENT AND COMPARISON WITH
`PIRIM REFERENCE
`
`The ’293 patent specification discloses a visual perception processor
`
`comprised of histogram calculation units. Ex. 1001 at 1 (Abstract). For example,
`
`the ’293 Patent teaches a “self-adapting histogram calculation unit.” Ex. 1001 at
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`4:45–49. Figure 4, which is included on the face of the patent, shows an
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`exemplary embodiment of a self-adapting histogram calculation unit:
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`5
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1001, Fig. 4 (page 6, annotated – analysis memory 100 in red, classification
`unit 101 in blue, time coincidences unit 102 in purple, and bus 111 in yellow)
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`
`
`Although Petitioner points to disclosures of Pirim (WO99/36893) that are
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`purportedly similar to the passive histogram calculation unit of Figure 3 of the ’293
`
`patent, the ’293 patent specification notes that it is “desirable to provide an
`
`improved visual perception processor, and methods, as well as, in preferred
`
`embodiments, the auto-adapting, anticipation, and learning functions.” Ex. 1001 at
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`1:49–53 (emphasis added). The ’293 patent discloses Figure 3 as a baseline
`
`embodiment called a “passive histogram calculation unit,” shown annotated below:
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`6
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1001, Fig. 3 (page 5, annotated – analysis memory 100 in red, classification
`unit 101 in blue, time coincidences unit 102 in purple, and bus 111 in yellow).
`
`The passive histogram shown above in Figure 3 has the baseline functionality of a
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`histogram calculation unit according to the ’293 patent but lacks features such as
`
`self-adaptation (described above and shown in Figure 4).
`
`The passive histogram unit displayed in Figure 3 also lacks the ability to
`
`process multiple different parameters, an improvement referred to in the ’293
`
`patent specification as a “polyvalent histogram unit.” Polyvalent histogram units
`
`can be flexibly programmed to process a desired parameter. See Ex. 1001 at
`
`21:33–63. The polyvalent histogram units can be configured in a matrix whereby
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`each polyvalent histogram unit has access to all parameter data for maximum
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`flexibility of operation—something which is not disclosed by Pirim. See Ex. 1001
`
`at 21:36–42.
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`7
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Figure 32 exemplifies the use of multiple polyvalent histogram calculation
`
`units with programmable input. See, e.g., Ex. 1001 at Fig. 32, 5:66–67 (“FIG. 32
`
`represents a set of histogram calculation units with programmable input control in
`
`their context of usage . . . .”). Figure 32 shows an exemplary device comprising
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`sixteen “polyvalent histogram calculation units,” which are the sixteen squares
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`labelled “1a00” through “1a33,” each of which has access via bus 510 (yellow) to
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`parameters including luminance (L), tone (T), saturation (S), speed (V), and
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`direction (D):
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`
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`8
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`
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`Ex. 1001, Fig. 32 (page 29, annotated).
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1001 at 20:43–47 (describing L, T, S), 21:33–47 (describing embodiment of
`
`Figure 32).
`
`A polyvalent histogram calculation unit is capable of processing multiple
`
`parameters, not just a single fixed parameter as in Pirim. Ex. 1001 at 21:18–36.
`
`The ’293 patent also teaches that more than one polyvalent histogram unit may be
`
`tasked to process one parameter. See Ex. 1001 at 26:34–59 (claim 1). The ’293
`
`patent teaches that “control unit 513 provides overall control and determines which
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`of the parameters . . . are to be processed at a given time by one or several
`
`dedicated polyvalent histogram unit(s).” Ex. 1001 at 21:42–47 (emphasis added).
`
`Pirim (Ex. 1005) on the other hand discloses each histogram formation unit
`
`receiving data for one parameter separately from other units. Compare Ex. 1001
`
`(’293 patent) at 21:18–36, 42–47, Fig. 32, with Ex. 1005 (Pirim) at 27–28, Fig. 12
`
`(Figure 12 on stamped page 75).
`
`Figure 31a teaches how the ’293 achieves a polyvalent histogram calculation
`
`unit, i.e. by way of an input multiplexer 500 capable of time multiplexing multiple
`
`parameters. Ex. 1001 at 21:18–29. For reference, an annotated Figure 31a is
`
`copied below.
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`9
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1001 at 28 (Fig. 31a) (annotated – input multiplexer 500 and associated
`register 501 in yellow, data bus 510 in blue, and SELECT command 502 in green).
`
`
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`The ’293 patent describes figure 31a:
`
`In the embodiment shown on FIG. 31a, the different parameters
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`DATA(A) ... DATA(E) feed an input multiplexer 500 [yellow] that is
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`controlled by a register 501. The register 501 is updated by the
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`command SELECT 502 [green]. . . . In this embodiment, it is thus
`
`possible to use a single histogram calculation unit 1 to process any of
`
`the different parameters A, B, C ... E that are addressed by a bus 510
`
`[blue] in relation to the SELECT command 502.
`
`Ex. 1001 at 20:63–66 (annotated in brackets to identify the color of each
`
`component in the annotated Figure 31a above). The ’293 patent goes on to
`
`describe the advantage of such a configuration:
`
`In this manner, fewer histogram calculation units are needed for
`
`processing the desired parameters, thereby reducing the amount of
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`silicon required for producing the required number of histogram
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`calculation units.
`
`Ex. 1001 at 21:25–29. The histogram calculation unit 1 in Figure 31a, with input
`
`multiplexer 500 and its associated register 501, thus constituted a polyvalent
`
`histogram calculation unit. Ex. 1001 at 33–36.
`
`Pirim discloses only two multiplexers, 102 and 104, neither of which can
`
`select from more than a single data parameter. Ex. 2009 ¶¶ 39–41. An annotated
`
`figure 14 from Pirim is copied below for reference.
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`11
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1005 at 77 (Fig. 14) (annotated – multiplexers 102 and 104 in yellow, input
`signals to the multiplexers in blue, and control signal “init” in green).
`
`As seen above, multiplexers 102 and 104 (yellow) both take only “init” (green) as
`
`the control signal to determine which of the two input signal (blue) to output.
`
`Ex. 2009 ¶¶ 39–41. The two possible input data signals for multiplexer 102 in
`
`Figure 14 above are a single line of “data” and a constant “zero.” See Ex. 1005 at
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`29. The two possible input data signals for multiplexer 104 are data(V), i.e. the
`
`“V” or velocity parameter data, and the Counter signal, which is used to reset the
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`12
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`histogram memory. See Ex. 1005 at 28–29. Only one kind of parameter data
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`signal (“V”) can pass through multiplexer 104 (and subsequently multiplexer 102).
`
`The two multiplexers are mentioned only in Pirim in Figure 14 and on Pirim pages
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`27 and 30 (marked pages 29 and 32).
`
`A.
`
`Person of Ordinary Skill in the Art
`
`For purposes of this inter partes review, Patent Owner submits that a person
`
`of ordinary skill in the art (or “POSA”) in 2000 (the foreign priority date of the
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`’293 patent) would be someone with an undergraduate degree in electrical
`
`engineering or image processing or a related field, followed by at least two years of
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`graduate coursework and also at least early-stage thesis research, in digital image
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`processing. The requisite knowledge and experience would have been acquired, for
`
`example, by someone who had completed all coursework in a two year master’s
`
`program focused on digital image processing, along with at least some thesis
`
`research qualifying towards a degree in such a program.
`
`B. Claim Construction
`
`Patent Owner agrees that the broadest reasonable interpretation (BRI)
`
`standard applies to this inter partes review proceeding. Paper 15 at 9.
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`13
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`1. “an input multiplexer adapted to receive data describing one or more
`parameters of the event being detected, and to output data
`describing a selected one of the one or more parameters in response
`to a selection signal” (Claim 22)
`
`Patent Owner proposes that the language of claim 22, “an input multiplexer
`
`adapted to receive data describing one or more parameters of the event being
`
`detected, and to output data describing a selected one of the one or more
`
`parameters in response to a selection signal,” requires that the multiplexer be
`
`capable of receiving data from multiple parameters. As the claim language
`
`suggests, it also must be capable of receiving data from one parameter, but that
`
`alone is insufficient. The multiplexer must be capable of receiving both “one” or
`
`“more” than one parameter. Further, once the data from the one or more parameter
`
`inputs is received by the parameter, the multiplexer must output data from a
`
`“selected one” of the one or more parameters for which input was received. That
`
`is, a specific selection must be made from amongst the one or more parameters
`
`received.
`
`The claim language itself supports Patent Owner’s proposed construction.
`
`Ex. 2009 ¶¶ 25–26. First, if the language were read so as to require only the ability
`
`to receive data for only one parameter, there would be no need to include the
`
`words “one or more” in the claim. The language could simply state “a” instead of
`
`“one or more.”
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`14
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Similarly, if the claim language required only the ability to receive data for
`
`one parameter, the claim language “output data describing a selected one of the
`
`one or more parameters” would be superfluous, or could just have stated “output
`
`data describing the parameter” our “output data describing the selected parameter.”
`
`Instead, the claim language specifically requires the ability to receive “one
`
`or more” parameters, and then to select from among those “one or more”
`
`parameters in determining what data to output. The reasonable conclusion that a
`
`POSA would draw is that the multiplexer must be capable of receiving data from
`
`multiple parameters and then outputting data based upon selecting from among
`
`such parameters.
`
`This construction is supported by the specification of the ’293 patent. Ex.
`
`2009 ¶¶ 27–29. As described above, Figure 31a teaches an embodiment of how
`
`the ’293 achieves a polyvalent histogram calculation unit, i.e., a histogram
`
`calculation unit capable of processing different input parameters depending on a
`
`selection. Figure 31a achieves this by way of an input multiplexer 500 capable of
`
`time multiplexing various parameters according to a selection signal. Ex. 1001 at
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`20:58–60, 21:18–29. Figure 31a is described in detail above in Section IV. For
`
`reference, we repeat the annotated Figure 31a below.
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`15
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`Ex. 1001 at 28 (Fig. 31a) (annotated – input multiplexer 500 and associated
`register 501 in yellow, data bus 510 in blue, and SELECT command 502 in green).
`
`
`
`As seen above, and as described in the text quoted in Section IV above from
`
`Ex. 1001 at 20:63–66, the “input multiplexer 500” is capable of receiving both
`
`“one” or “more than one” parameter, which it selects with a selection signal 502.
`
`By contrast, the ’293 specification teaches that when a multiplexer is
`
`implemented for only one parameter and a second non-parameter signal (such as a
`
`“counter” or a “0” signal), that histogram cannot be configured for multiple
`
`parameters. For example, in the embodiment described in the specification at
`
`column 9 in reference to Figure 3 (the simpler, passive histogram calculation unit),
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`the two signals input signals are data for parameter A (DATA(A)) and a counter
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`signal. See Ex. 1001 at 9:7–17. The counter signal is used to “zero out” the
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`histogram memory 100. See Ex. 1001 at 9:7–17. Therefore, a second parameter
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`data signal could not be substituted for the counter signal. And because the control
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`16
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`signal is binary and the multiplexer is a “two to one” type multiplexer, additional
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`signals could not be added.
`
`Patent Owner’s construction is also supported by reference to different types
`
`of multiplexers
`
`identified
`
`in other claims, under
`
`the doctrine of claim
`
`differentiation. Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1552
`
`(Fed. Cir. 2007) (“That doctrine [claim differentiation] is based on ‘the common
`
`sense notion that different words or phrases used in separate claims are presumed
`
`to indicate that the claims have different meanings and scope.’” (citing Karlin
`
`Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)). For
`
`example, in claim 4, which depends from claim 3, an input multiplexer is described
`
`with only one parameter input, namely the “succession of data aijT,” the only other
`
`input being a “counting” signal. Ex. 1001 at 27:60–28:6. This is similar to the
`
`embodiment discussed above that appears in column 9 of the specification. If that
`
`were all that was required for claim 22, i.e., input from a single parameter, there
`
`would have been no need to state in claim 22 “input multiplexer adapted to receive
`
`data describing one or more parameters.” Accordingly, claim 22 requires that the
`
`input multiplexer must be capable of receiving data for multiple parameters.
`
`Similarly, in claim 13, which depends from claims 3 and 12, there are
`
`multiple parameters (DATA (A) . . . (E)), but in this case there are multiple “input
`
`multiplexers,” “each being associated with the input of a register . . . .” Ex. 1001 at
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`17
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`28:47–54. Again, claim 13 shows an alternate configuration not claimed in claim
`
`22, where each multiplexer receives data for a single parameter. Clearly, the intent
`
`in claim 22, in comparison to claims 4 and 13, is that in claim 22 there is a single
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`multiplexer, but as in Fig. 31a, that multiplexer must be capable of receiving data
`
`for multiple parameters, even if only data from one parameter are actually
`
`received.
`
`Finally, this construction is consistent with how a POSA would have
`
`understood the claim language at the time of the invention using understood terms
`
`such as “multiplexer.” A POSA would have understood that a “multiplexer” refers
`
`to a piece of hardware with multiple signals input with a single (selected) output
`
`signal. Ex. 2009 ¶ 30. For example, the IEEE Authoritative Dictionary of IEEE
`
`Standards Terms in 2000 defines a multiplexer as “A device that allows the
`
`interleaving of two or more signals to a single line or terminal” or “A device for
`
`selecting one of a number of inputs and switching its information to the output.”
`
`Ex. 2011 (The Authoritative Dictionary of IEEE Standards Terms). A POSA
`
`would have understood that the additional claim limitation language regarding the
`
`selection of parameter data means more than that just the basic selection
`
`functionality, inherent in any multiplexer, is required. A POSA would understand
`
`the additional claim limitation language “an input multiplexer adapted to receive
`
`data describing one or more parameters of the event being detected, and to output
`
`18
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`
`
`data describing a selected one of the one or more parameters in response to a
`
`selection signal” to mean the multiplexer must be capable of receiving both “one”
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`or “more” than one parameter.
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`V. LEGAL STANDARDS
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`To make a prima facie showing of obviousness for a challenged claim under
`
`35 U.S.C. § 103, the Petition must, among other requirements, fulfill the
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`requirements set forth in Graham v. John Deere Co., 383 U.S. 1 (1966), including
`
`demonstrating that the cited references, in combination, disclose each element of
`
`the claim. In re Magnum Oil Tools Int’l., 829 F.3d 1364, 1376 (Fed. Cir. 2016);
`
`see Apple Inc. v. Contentguard Holdings, Inc., IPR2015-00442, Paper 9 at 12
`
`(P.T.A.B. July 13, 2015).
`
`A legal conclusion of obviousness must be based on a factual background
`
`developed by consideration of each of the following factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claims at
`
`issue; and (3) the level of ordinary skill in the art at the time of the invention. See
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`35 U.S.C. § 103(a); Graham, 383 U.S. 1 at 17–18. Without exception,
`
`consideration of every factor in the Graham framework is mandatory. Kinetic
`
`Concepts, 688 F.3d at 1360 (Fed. Cir. 2012); see Liberty Mut. Ins. Co. v.
`
`Progressive Cas. Ins. Co., CBM-2012-00003, Paper 7 at 3 (Order) (P.T.A.B. Nov.
`
`26, 2012).
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`19
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`
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`In particular, an obviousness analysis must identify the difference(s)
`
`between the claim and the prior art. Kinetic Concepts, Inc. v. Smith & Nephew,
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`Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (“Indeed, courts must consider all of the
`
`Graham factors prior to reaching a conclusion with respect to obviousness.”);
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`Whole Space Indus Ltd., IPR2015-00488, Paper 14 at 15 (P.T.A.B. July 24, 2015)
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`(differences between the prior art and the claims at issue is one of the fundamental
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`factual inquiries underlying an obviousness analysis); Google, Inc. v. Everymd.com
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`LLC, IPR2014-00347, Paper 9 at 25 (P.T.A.B. May 22, 2014) (“Rather,
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`Petitioners’ summaries, quotations, and citations from both references, with
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`Belanger’s figures, place the burden on us to . . . identify any differences between
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`the claimed subject matter and the teachings of Shah and Belanger.”) (emphasis
`
`added); Liberty Mut., CBM-2012-00003, Paper 7 at 2–3 (“Differences between the
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`claimed invention and the prior art are a critically important underlying factual
`
`inquiry for any obviousness analysis.”).
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`A petition must provide an explicit rationale to make proposed modifications
`
`to or combinations of the prior art references, despite the differences between the
`
`claimed invention and the prior art, without relying on the patent disclosure itself.
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`Apple Inc. v. Contentguard, Paper 9 at 15; see also Proctor & Gamble Co. v. Teva
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`Pharm. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009).
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`20
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`A petition must also explain why a person of ordinary skill in the art would
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`simultaneously make multiple changes and implementation choices to arrive at a
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`particular invention. Apple Inc. v. Contentguard, Paper 9 at 16–17 (“[W]e are not
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`persuaded that the Petition sufficiently explains why a person of ordinary skill
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`would simultaneously make all of the many particular proposed changes and
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`implementation choices”) (internal citations omitted).
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` Even if individual
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`modifications or choices were obvious, a petition must explain why making all of
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`the changes at once would be obvious. Id. at 16–17 (“[T]he mere fact that
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`individual changes might have been obvious does not make doing all of the
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`changes at once obvious.”).
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`Most inventions rely on known building blocks, so Petitioner must show that
`
`a POSA would both select and combine the building blocks “in the normal course
`
`of research and development to yield the claimed invention.” Unigene Labs., Inc.
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`v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007)). It is important to identify a reason and
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`motivation that would have prompted a POSA to combine the prior art elements in
`
`the way claimed in the challenged patent, to achieve the invention. Proctor &
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`Gamble Co., 566 F.3d at 994; KSR, 550 U.S. at 418–19.
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`Hindsight analysis is inappropriate; obviousness must be measured “at the
`
`time the invention was made.” Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d
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`21
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`IPR2017-00336 (’293 Patent)
`Patent Owner’s Response
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`1358, 1364 (Fed. Cir. 2009) (emphasis in original). The Petitioner must not use
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`the patent as a roadmap. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
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`(citing Grain Processing v. American-Maize Prods, 840 F.2d 902, 907 (Fed. Cir.
`
`1988)); see also KSR, 550 U.S. at 421.
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`VI. CLAIM 22 IS NOT UNPATENTABLE AS OBVIOUS OVER PIRIM
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`Because Pirim does not teach or suggest an input multiplexer of the type
`
`required by claim 22, Pirim does not render claim 22 obvious. The Board should
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`therefore hold that claim 22 is not unpatentable over Pirim.
`
`A.
`
`Pirim does not disclose “an input multiplexer adapted to receive
`data describing one or more parameters of the event being
`detected, and to output data describing a selected one of the one
`or more parameters in response to a selection signal”
`
`Pirim does not disclose “an input multiplexer adapted to receive data
`
`describing one or more parameters of the event being detected, and to output data
`
`describing a selected one of the one or more parameters in response to a selection
`
`signal.” Ex. 2009 ¶¶ 36–42. As discussed in Section IV.B.1, the claim requires
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`that the input multiplexer be capable of receiving data for multiple parameters, the
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`output data being selected from one among these parameters. Pirim, however,
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`merely discloses a basic form of a multiplexer in which a single multiplexer
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`receives data from a single histogram unit, which outputs data for a single
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`parameter. See Ex. 1005 at 77 (Fig. 14). As discussed in more detail in Section
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`IV, the Pirim multiplexer has two inputs, one being from
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