Paper 60
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`TWITTER, INC.
`
`Petitioner
`
`v.
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`(Claims 1, 4-5, 8-9, 11-17, 19-26, and 28-30)
`
`_____________________________
`
`PATENT OWNER VIDSTREAM LLC’s SUR-REPLY
`
`73437171.2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`TWITTER, INC.
`
`Petitioner
`
`v.
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`Case IPR2017-01131
`U.S. Patent No. 8,464,304
`(Claims 1, 4-5, 8-9, 11-17, 19-26, and 28-30)
`
`_____________________________
`
`PATENT OWNER VIDSTREAM LLC’s SUR-REPLY
`
`73437171.2
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`IPR2017-01131
`U.S. Patent No. 8,464,304
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`TABLE OF CONTENTS
`
`B.
`
`I.
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`PETITIONER’S FOCUS ON SYMBIAN, SDKs, AND APIs IS
`IMPROPER AND IRRELEVANT ................................................................. 3
`A.
`Petitioner’s Improper New Arguments Should be Disregarded ........... 5
`1. Petitioner’s new Reply arguments and exhibits .............................. 5
`2. Petitioner’s original argument ......................................................... 8
`3. The Board should disregard Petitioner’s Reply ............................ 12
`Petitioner’s New Arguments Do Not Demonstrate Capturing
`Video According to Predetermined Constraints Received from a
`Sever .................................................................................................... 13
`1. Petitioner’s new exhibits and analyses are irrelevant to the
`actual equipment disclosed in Lahti .............................................. 15
`2. Petitioner and its expert did not analyze the actual technology
`disclosed in Lahti .......................................................................... 16
`3. Petitioner’s attempt to reframe its original argument as
`including the SDK does not overcome Lahti’s shortcomings ...... 18
`PETITIONER’S OTHER ARGUMENTS ABOUT LAHTI ARE
`UNAVAILING .............................................................................................. 21
`A.
`The Number of Phones Reviewed by Dr. Olivier is Irrelevant ........... 21
`B.
`Petitioner Neglects Relevant Portions of the Specification to
`Contend Lahti’s Disclosure is Equivalent to the ’304 Patent ............. 22
`IV. CONCLUSION .............................................................................................. 24
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`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Papst Licensing GMBH & CO. KG,
`IPR2016-01842, 2018 Pat. App. LEXIS 4314 (PTAB 2018) .............................. 4
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 5
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................ 4, 12, 13
`
`Page(s)
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`IPR2013-00517, 2015 Pat. App. LEXIS 2299 (PTAB 2015) ............................ 12
`K/S HIMPP v. Hear-Wear Techs.,
`LLC, 751 F.3d 1362 (Fed. Cir. 2014) ................................................................... 2
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 20
`Southwire Co. v. Cerro Wire LLC,
`870 F.3d 1306 (Fed. Cir. 2017) .......................................................................... 20
`Statutes and Regulations
`35 U.S.C. § 312(a)(3) ................................................................................................. 4
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 12, 13
`37 CFR § 42.23(b) ....................................................................................... 1, 2, 3, 13
`37 CFR § 42.123(b) ........................................................................................... 1, 2, 3
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`TABLE OF EXHIBITS
`
`Description
`No.
`2001 Official Notice of Bankruptcy Case Filing, U.S. Bankruptcy Court for the
`Western District of Oklahoma, Case No., 17-14849 (filed November 30,
`2017)
`2002 Declaration of James Olivier, Ph.D.
`2003 Webpage entitled “Review GSM phone Nokia 6270” that was archived by
`the Wayback Machine at web.archive.org on February 5, 2006
`2004 Webpage entitled “Nokia E50 Hands-on Preview” that was archived by
`the Wayback Machine at web.archive.org on May 30, 2006
`2005 Nokia webpage listing specifications of the Nokia 6630 that was archived
`by the Wayback Machine at web.archive.org on December 29, 2004
`2006 Webpage entitled “Nokia 6630 (Nokia Charlie) Detailed Tech Specs”
`2007
`CNET webpage entitled “Nokia 6630 – smartphone – GSM / UMTS
`Series Specs”
`Transcript of June 20, 2018 Deposition of Henry Houh, Ph.D.
`2008
`2009 Affidavit of Christopher Butler – NOT FILED
`2010
`Transcript of September 6, 2018 Deposition of Henry Houh, Ph.D.
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`I.
`
`INTRODUCTION
`Petitioner’s Reply improperly adds new arguments and evidence that should
`
`be disregarded. For example, Petitioner did not seek leave under 37 CFR
`
`§ 42.123(b) for a late submission of supplemental information, but nevertheless
`
`submits multiple new exhibits and theories with its Reply to, among other things:
`
`(1) contend Lahti discloses capturing video according to predetermined constraints
`
`via a software development kit (“SDK”); (2) substantially increase a POSITA’s
`
`purported knowledge to include a detailed understanding of mobile operating
`
`systems and SDKs; and (3) add a new invalidity theory premised upon Lahti paired
`
`with the alleged additional knowledge of a POSITA. But, Petitioner’s expert was
`
`clear in his first deposition: despite being “a person with at least ordinary skill in the
`
`art” (Ex. 1003 at ¶45), he was unaware of any camera phone SDK that allowed
`
`external control of frame rate. See, e.g., Ex. 2008 at 79:18-18:7. Petitioner’s new
`
`arguments and evidence are improper under 37 CFR § 42.23(b) and should be
`
`disregarded.
`
`Patent Owner’s (“PO”) Response describes why Lahti (Ex. 1006), Petitioner’s
`
`primary reference for all asserted grounds, fails to supply certain features of each of
`
`independent claims 1, 17, 22, 26, including a server providing instructions to a client
`
`computing device to cause video data to be captured in accordance with
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`1
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`predetermined constraint(s) defined by the instructions. Paper 50 (“POR”) at 23-24,
`
`25, 27. Despite impermissibly introducing new invalidity grounds and arguments
`
`under the guise of rebuttal evidence, Petitioner’s Reply fails to plug the gaps in Lahti.
`
`Paper 53 (“Reply).
`
`The Petition and Dr. Houh originally contended, without any support, that the
`
`Lahti reference discloses capturing video according to predetermined constraints
`
`received from a server—such as a frame rate and a resolution parameter. However,
`
`as PO and Dr. Olivier noted in Response, Lahti discloses no such thing. Lahti merely
`
`discloses an example where video was captured, and notes that the captured video
`
`has formatting consistent with standard frame rates and resolutions used at the time
`
`of Lahti. Through new evidence and argument added in violation of 37 CFR
`
`§ 42.23(b) and § 42.123(b), Petitioner doubles down on its unsupported position,
`
`now contending various technologies not specifically disclosed in Lahti (or the
`
`Petition) must be what control parameters by which video is captured. Petitioner’s
`
`new (and improper) arguments fare no better than its prior position. There is simply
`
`no disclosure in Lahti of video captured according to predetermined constraints
`
`received from a server, and Petitioner’s and its expert’s repeated references to
`
`additional knowledge of a POSITA beyond what is disclosed in Lahti cannot
`
`substitute for actual disclosure of this critical claim limitation. See K/S HIMPP v.
`
`Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (noting that “the
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`Board cannot accept general conclusions about what is ‘basic knowledge’ or
`
`‘common sense’ as a replacement for documentary evidence for core factual findings
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`in a determination of patentability,” and acknowledging “the well-established and
`
`time-honored requirement that rejections be supported by evidence”).
`
`Petitioner still has not demonstrated that Ex. 1006, or any other exhibit save
`
`the challenged patent itself, teaches capturing video data in accordance with
`
`predetermined constraints received from a server, which is fatal to its Petition. All
`
`challenged dependent claims depend from independent claims 1, 17, 22, 26, and
`
`therefore, all asserted grounds fail to show unpatentability of any challenged claim.
`
`PO therefore respectfully asks the Board to uphold the patentability of claims
`
`1, 4-5, 8-9, 11-17, 19-26, and 28-30.
`
`II.
`
`PETITIONER’S FOCUS ON SYMBIAN, SDKs, AND APIs IS
`IMPROPER AND IRRELEVANT
`Petitioner’s Reply is full of new arguments, explanations, and apparent
`
`alleged invalidity grounds, but such arguments should have been included in the
`
`Petition and are improper at this late juncture. See 37 CFR §§ 42.23(b), 42.123(b).
`
`Petitioner now advances numerous theories about application program interfaces
`
`(“APIs”), SDKs, the Symbian operating system, and the knowledge of a POSITA
`
`that were wholly absent from the original Petition. These arguments should not be
`
`considered by the Board, and the patentability of all challenged claims should be
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`upheld for the reasons provided in PO’s Response. See Intelligent Bio-Systems, Inc.
`
`v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the
`
`utmost importance that petitioners in the IPR proceedings adhere to the requirement
`
`that the initial petition identify ‘with particularity’ the ‘evidence that supports the
`
`grounds for the challenge to each claim.’” (citing 35 U.S.C. § 312(a)(3))); see also
`
`id. (“[T[he expedited nature of IPRs bring with it an obligation for petitioners to
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`make their case in their petition to institute.”).
`
`Further, Petitioner’s new arguments concerning potential phone capabilities
`
`in 2006 are a red herring. Whether or not the equipment in Lahti was capable of
`
`capturing video using multiple resolutions or frame rates is irrelevant and has no
`
`bearing on the actual disclosure of Lahti, which does not describe video capture
`
`according to predetermined constraints.
`
`Despite its technical, thorough description of the MobiCon application, Lahti
`
`never describes capturing video according to anything other than the phone’s
`
`standard parameters. Petitioner is left citing new Symbian documentation in order
`
`to hypothesize MobiCon implementation details that are found nowhere in the Lahti
`
`reference. Such manufactured disclosure cannot credibly teach “caus[ing] the video
`
`data to be captured in accordance with predetermined constraints,” and Petitioner’s
`
`improper hindsight cannot create disclosure where none exists. See Apple Inc. v.
`
`Papst Licensing GMBH & CO. KG, IPR2016-01842, Paper 35, 2018 Pat. App.
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`LEXIS 4314, *15-16 (PTAB April 26, 2018) (“[T]he Court cautions us against ‘the
`
`temptation to read into the prior art the teachings of the invention in issue.’” (citing
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966))).
`
`A.
`
`Petitioner’s Improper New Arguments Should be Disregarded
`1.
`Petitioner’s new Reply arguments and exhibits
`For the first time, Petitioner now contends that Lahti uses application
`
`interfaces and software development kits for a variety of mobile phones to capture
`
`video according to predetermined constraints. For example, Petitioner’s Reply now
`
`contends that “Lahti is explicit that MobiCon does control video recording on
`
`various types of mobile phones, and does so in conjunction with vendor provided
`
`software development kits.” Reply at 6 (emphasis added); see also id. at 5
`
`(contending “MobiCon interacts with a mobile phone through an application
`
`interface to effect video capture” (emphasis added)). To support Petitioner’s new
`
`invalidity position, the Reply and related expert declaration (Ex. 1052) improperly
`
`advance previously undisclosed arguments concerning the Lahti reference in view
`
`of a POSITA’s purported knowledge of APIs, SDKs, and the Symbian operating
`
`system used by certain mobile devices. See, e.g. Reply at 3, 6, 7, 10-14 (contending
`
`for the first time that a POSITA would know of certain SDKs and APIs); Ex. 1052
`
`at ¶¶5, 7, and 8 (contending a POSITA would have knowledge of APIs and SDKs
`
`“for a wide variety of devices and operating systems,” including “detailed
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`knowledge of the Symbian operating system”). Petitioner’s position is also
`
`predicated upon new arguments and exhibits concerning the purported popularity of
`
`the Symbian operating system, and functionality within Symbian-related SDKs and
`
`APIs. See Reply at 12-14 (relying upon certain features and the alleged popularity
`
`of Symbian); Ex. 1052 at ¶7 (contending Symbian had a “dominant share of the
`
`smartphone operating system market”), and ¶¶14, 16, and 20 (purporting to describe
`
`API functions in Symbian); and Exs. 1043, 1044, 1045, 1047, and 1048 (describing
`
`Symbian and related APIs and SDKs).
`
`Much of the Reply and Dr. Houh’s second declaration (Ex. 1052) focus on
`
`mobile operating systems—especially Symbian—and their related programming
`
`interfaces. However, the Petition and its original declaration (Ex. 1003) never
`
`reference Symbian, any Symbian-related SDKs, or any Symbian-related APIs, and
`
`the only reference to any API in the Petition and Ex. 1003 is a passing reference in
`
`a quote from Lahti that was relied upon for other, non-API related disclosure.
`
`The framework for Petitioner’s new SDK-theory appears to have first been
`
`conceived by Dr. Houh during his initial deposition. See POR at 21. But, as
`
`admitted during that deposition, Dr. Houh was unfamiliar with the very SDKs he
`
`now alleges are used by Lahti—he had not even investigated the SDKs he now relies
`
`upon:
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`Q. Dr. Houh, did you review any particular SDKs that were
`available for camera phones in 2006?
`A. Not for the purposes of this proceeding.
`Q. Are there any particular examples of SDKs available for
`camera phones in 2006 you can give me that allowed external control
`of the frame rate at which video was captured by the camera phone?
`A. I think I’d have to do some investigation and look at the SDKs
`available at the time and the documentation for those SDKs.
`Q. So as we sit here today, you can’t give me any particular
`examples?
`A. I can’t give you an example one way or the other without
`doing some investigation.
`
`Ex. 2008 at 79:18-18:7 (emphases added). Having apparently now performed an
`
`investigation after reviewing PO’s Response, Dr. Houh and Petitioner seek to
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`improperly update their invalidity theories.
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`Rather than providing permitted rebuttal, Petitioner’s Reply and supporting
`
`declaration supplement the Petition’s invalidity grounds and arguments by
`
`(1) focusing on disclosures in Lahti that were not the bases of Petitioner’s original
`
`contention (see, e.g., Reply at 6, 10 (referencing “vendor provided SDKs”)), and
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`(2) greatly increasing the alleged knowledge of a purported POSITA to include
`
`highly specialized knowledge of the Symbian operating system (see, e.g., Reply at
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`7, 10, 12, 13). See also, e.g., Exs. 1043, 1047, and 1048. While Petitioner attempts
`
`to frame its new disclosure as rebuttal to Dr. Olivier, the Board should view
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`Petitioner’s disclosure for what it is: a revised invalidity theory not found within the
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`Petition that goes well beyond rebuttal to Dr. Olivier’s opinions.
`
`2.
`Petitioner’s original argument
`As described in PO’s Response, the Petition contends that Lahti alone
`
`discloses claim elements 1[c] and 26[b]:
`
` 1[c] “wherein the instructions are provided to the client computing
`device by the server system and cause the video data to be captured in
`accordance with predetermined constraints and the predetermined
`constraints include a frame rate defined by the instructions;”
`
` 26[b] “one or more servers operable to interact with the user device and
`to: provide instructions for use by the user device for capturing video
`data in accordance with predetermined constraints, wherein the
`predetermined constraints include a frame rate defined by the
`instructions.”
`
`POR at 23-24. Further, the Petition contends that Lahti alone discloses the following
`
`portions of claim elements 17[b] and 22[b]:
`
` 17[b] “wherein the user interface is provided in accordance with
`instructions received from a server system and the instructions cause
`the content to be captured in accordance with predetermined constraints
`that include a frame rate defined by the instructions;”
`
` 22[b] “wherein the user interface is provided in accordance with
`instructions received from a server system and the instructions cause
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`the content to be captured in accordance with predetermined constraints
`that include a frame rate defined by the instructions.”
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`POR at 25, 27. Particularly, the Petition states:
`
`. . . Lahti further teaches that MobiCon provides parameters by
`which the mobile device (on which the application is executing)
`captures video data. Lahti explains that MobiCon captures video using
`a user interface capture screen and further describes the parameters
`provided by the app that control the format and frame rate for the
`captured video:
`
`Then, MobiCon’s main screen is displayed (Screenshot 3),
`where the user can choose to view and edit personal
`information, to load video clips, or to capture a new clip
`(Screenshot 4). A new video clip is captured in Capture
`Screen using Mobile Media API and it is recorded
`according to 3GPP specification using AMR coding for
`audio and H.263 at 176x144 pixels size at 15 frames per
`second for video.
`
`([Ex. 1006], p. 6.)
`
`A POSITA would understand parameters such as video format,
`video resolution and video frame rate to “predetermined constraints”
`[sic] as that language is used in the ’304 Patent, which expressly
`includes these items in its examples of predetermined constraints. (Ex.
`1001 at 4:36-38; 10:61-11:1.) A POSITA would further understand that
`Lahti discloses
`limitation 1[c] since MobiCon provides
`these
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`parameters to the mobile device to control video capture. (Ex. 1003,
`¶¶95-99.)
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`Pet. at 22-23 (bolding in original, underline emphases added) (addressing claim
`
`element 1[c]); see also Pet. at 29 (addressing claim element 26[b] and referring back
`
`to the Petition’s explanation of claim element 1[c]); Pet. at 63 (addressing claim
`
`element 17[b] and referring back to the Petition’s explanation of claim element 1[c]);
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`Pet. at 69-70 (addressing claim element 22[b] and referring back to the Petition’s
`
`explanation of claim element 17[b], which refers back to the Petition’s explanation
`
`of claim element 1[c]). The cited paragraphs of Petitioner’s original expert
`
`declaration offer little more analysis than the above-quoted portion of the Petition.
`
`See Ex. 1003 at ¶¶95-99 (providing no analysis regarding any API, SDK, or the
`
`Symbian OS).
`
`As shown above, the Petition does not rely on the Symbian operating system,
`
`any Symbian-related SDK, or any Symbian-related API. Instead, as noted in PO’s
`
`Response, the Petition and Ex. 1003 conclude that because the exemplary video
`
`recorded in Lahti had certain aspects (i.e. video format, video resolution, and video
`
`frame rate), that video must have been captured according to “predetermined
`
`constraints.” POR at 8-9, 20.
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`While the portion of Lahti quoted in the Petition does reference a “Mobile
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`Media API,” the Petition does not explain the relevance of (or otherwise rely upon)
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`this API. Indeed, Petitioner’s expert clearly testified that he is not familiar with this
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`API, and did not rely on its particular features:
`
`Q. Did you consider the mobile media API documents in
`preparing your opinions?
`
`A. I mean, I looked at them. I don’t think what I looked at – the
`documents that I saw, I didn’t rely on them in any way.
`
`Ex. 2010 at 63:3-7 (emphases added).
`
`Q. Do you recall who developed the mobile media API?
`
`A. Off the top of my head, I don’t recall that.
`
`Q. Do you recall whether the mobile media API was limited to
`Symbian?
`
`A. I don’t recall.
`
`Id. at 18-23 (emphases added).
`
`Despite its prior position, Petitioner now for the first time relies upon Lahti’s
`
`passing statement that “[v]ideo recording . . . is relatively straightforward to
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`implement with vendor provided SDKs” (Reply at 3, 6, and 10; Ex. 1052 at 10-11
`
`(quoting Ex. 1006 at 10)), to conclude: “Lahti is explicit that MobiCon does control
`
`video recording on various types of mobile phones, and does so in conjunction with
`
`vendor provided software development kits” (Reply at 6). However, this argument
`
`and supporting text from Lahti are found nowhere in the Petition and Ex. 1003, and
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`Petitioner should not be permitted to advance this new theory now.
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`3.
`The Board should disregard Petitioner’s Reply
`The USPTO’s Trial Practice Guide is clear: “a reply or sur-reply that raises a
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`new issue or belatedly presents evidence may not be considered. The Board is not
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`required to sort proper from improper portions of the reply or sur-reply.” USPTO
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`Trial Practice Guide Update (August 2018) at page 14 (updating § II.D.I) (available
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`at https://go.usa.gov/xU7GP) (emphasis added); see also Intelligent Bio-Systems,
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`Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016).
`
`This proceeding is similar to Case IPR2013-00517, addressed in the
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`Intelligent Bio-Systems decision cited above. See IPR2013-00517, Paper 87, 2015
`
`Pat. App. LEXIS 2299, at *20 (PTAB Feb. 11, 2015). In Intelligent Bio-Systems,
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`the Petition “urg[ed] obviousness based on” two references using a first rationale.
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`Id. Petitioner’s Reply “offer[ed] a distinct new line of reasoning” using the same
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`references. Id. Concluding this was improper, the Board noted “the Reply presents
`
`new issues by changing the unpatentability rationale from express reliance on [the
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`reference’s] conditions, to asserting that those conditions would have been obvious
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`to modify, as well as presenting new evidence to support the new rationale and
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`explain the modifications.” Id. Further, the Board also found the Reply improper
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`under 37 C.F.R. § 42.6(a)(3) because it “relie[d] extensively on in-depth
`
`explanations and supporting documentary evidence presented in” a new expert
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`declaration. Id. at *21-22. The Federal Circuit affirmed the Board’s decision not to
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`consider arguments made in Petitioner’s Reply. Intelligent Bio-Systems, 821 F.3d at
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`1370 (affirming where “the Board did not abuse its discretion in finding that IBS’s
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`reply brief and accompanying declaration were improper” under 37 CFR §§ 42.23(b)
`
`and 42.6(a)(3)).
`
`As in the Intelligent Bio-Systems proceeding, Petitioner’s Reply here “offers
`
`a distinct new line of reasoning” based on the references cited in its Petition. This
`
`new line of reasoning—i.e., that Lahti teaches using SDKs to capture video
`
`according to predetermined constraints—is not supported in the Petition or Ex. 1003.
`
`Thus, pursuant to 37 CFR §§ 42.23(b) and Section II.D.I of the PTAB’s Trial
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`Practice Guide, the Reply and its new invalidity arguments should be disregarded in
`
`its entirety. Moreover, because the Reply relies upon substantial new disclosure in
`
`Dr. Houh’s second declaration (Ex. 1052) as well as several exhibits (Exs. 1043,
`
`1047, and 1048), the Reply is improper under 37 CFR § 42.6(a)(3)). “While the
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`Board’s requirements are strict ones, they are requirements of which petitioners are
`
`aware when they seek to institute an IPR.” Intelligent Bio-Systems, Inc., 821 F.3d
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`at 1369.
`
`B.
`
`Petitioner’s New Arguments Do Not Demonstrate Capturing Video
`According to Predetermined Constraints Received from a Sever
`Even if the new invalidity arguments in Petitioner’s Reply are considered,
`
`Petitioner still has not demonstrated the unpatentability of any claim. Petitioner and
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`its expert misunderstand and myopically apply cherry-picked pieces of PO’s and Dr.
`
`Olivier’s explanation of capturing video according to predetermined constraints. Dr.
`
`Olivier’s position, echoed by PO, is that Lahti simply does not provide any
`
`description of video being captured according to predetermined constraints
`
`provided from a server. POR at 9-10 (citing Ex. 2002 at ¶58); see also Ex. 2002 at
`
`¶56 (“Lahti does not disclose or even reasonably suggest that Lahti’s MobiCon
`
`application governs or impacts in any way the parameters by which the mobile
`
`device captures video data.”). Petitioner does not (and cannot) rebut this, which is
`
`fatal to all challenged grounds.
`
`To further support his conclusion about Lahti’s lack of disclosure, Dr. Olivier
`
`considered the capabilities of exemplary Nokia phones, since the only specific
`
`device mentioned in Lahti is a Nokia 6630. POR at 14 (“[T]he only camera phone
`
`specifically mentioned in Lahti—the Nokia 6630—was not capable of recording at
`
`a higher resolution than what was disclosed in Lahti.”). Dr. Olivier’s review of the
`
`capabilities of these phones further confirmed that the sole example of video capture
`
`in Lahti captured video at the standard parameters for the device—a well-known
`
`standard format called “QCIF.” Ex. 2002 at ¶65; see also Ex. 1051 at 139:5-8
`
`(“[T]he QCIF was referring to the 174x144 . . . pixels.”). As described by Dr.
`
`Olivier, this further suggests the exemplary video captured in Lahti was not captured
`
`according to predetermined constraints or instructions provided by a server. Id. It
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`is this additional confirmation that Petitioner and its expert focus on in Reply—but
`
`even if Petitioner and its expert’s new arguments are considered on the merits, they
`
`still fail to demonstrate any disclosure in Lahti (or any other prior art) of video being
`
`captured according to predetermined constraints received from a server.
`
`1.
`
`Petitioner’s new exhibits and analyses are irrelevant to the
`actual equipment disclosed in Lahti
`The Nokia 6630—the only device identified in Lahti—apparently used
`
`version 8.0 of the Symbian operating system. Exs. 2006 at 1 and 2007 at 1; see also
`
`Ex. 1043 at 2 (indicating Nokia 6630 used Symbian version 8.0a). Despite his
`
`purported detailed analysis of the Symbian SDK, Dr. Houh admits to only reviewing
`
`versions 7.0, 8.1, and 9.1 of Symbian. Ex. 1052 at ¶14. Further, Petitioner’s new
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`(essentially identical) Exhibits 1047 and 1048, purportedly detailing the Symbian
`
`SDK used to control a phone’s camera, only correspond to version 8.1a. Petitioner
`
`has introduced no evidence concerning version 8.0 (or 8.0a) of the Symbian
`
`operating system. Indeed, Dr. Houh admitted in his deposition that he “couldn’t
`
`produce a version of the exact Symbian level as the Nokia 6630 phone is listed under
`
`on that previous Exhibit 1043.” Ex. 2010 at 17:12-15. As such, Petitioner’s reliance
`
`on Dr. Houh’s analysis of purported functionality of the Nokia 6630 disclosed in
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`Lahti is unreliable because his analysis rested on a review of irrelevant and
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`insufficient evidence. Reply at 13-14 (citing Ex. 1052 at ¶14 and Ex. 1048 at 15-
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`19).
`
`2.
`
`Petitioner and its expert did not analyze the actual technology
`disclosed in Lahti
`Petitioner and Dr. Houh’s reliance on version 8.1 of Symbian is curious for
`
`another reason: Lahti never specifically mentions Symbian or its APIs. Instead,
`
`Lahti briefly mentions, without description, a “UIManager” and a “Mobile Media
`
`API.” These software packages also form the basis of an apparent new (albeit
`
`unexplained) invalidity argument by Petitioner:
`
`Lahti goes on to explain that when capturing new video, “MobiCon’s
`main screen is displayed” and a “new video clip is captured in Capture
`Screen using Mobile Media API and it is recorded according to 3GPP
`specification using AMR coding for audio and H.263 at 176x144 pixels
`size at 15 frames per second for video.” [Ex. 1006] at 6. This is all
`handled by MobiCon’s UIManager which is a “controller component.”
`
`Reply at 3-4 (emphases added). However, despite passing references to the
`
`“UIManager” and the “Mobile Media API,” Petitioner provides no detail how these
`
`components are actually used to capture video according to predetermined
`
`constraints received from a server, as is required by all challenged claims.
`
`Petitioner’s failure of description is not surprising, as Dr. Houh admitted he had not
`
`reviewed the software listed in Lahti, but instead relied upon Lahti’s vague
`
`description of these modules:
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`
`Q. Did you do anything outside of reviewing Lahti to determine
`how UIManager actually functions?
`A. I reviewed Lahti. If you’re asking whether I tried to call the
`inventors and ask them for the code, I didn’t do that, no.
`I mean, Lahti is a reference. It’s teaching what it’s teaching.
`People of ordinary skill in the art look at this; they look at the figures.
`UIManager is clearly a software component that allows the user to
`provide input and interact with the application. It’s teaching what it's
`teaching.
`I did not – I did not even look for the source code of
`UIManager. I mean, what – I mean, that’s not what the disclosure is.
`The disclosure is the paper of Lahti.
`
`Ex. 1052 at 54:12-55:2 (emphases added). Indeed, when pressed, Dr. Houh admitted
`
`that he cannot say one way or another whether the UIManager and Mobile Media
`
`API of Lahti indeed provide predetermined constraints for video capture, or instead
`
`merely facilitate use of a native camera application that was already installed on a
`
`phone (i.e., not provided from a server):
`
`Q. As we sit here today, are you able to tell me yes or no whether
`it’s possible that the mobile media API simply allows the UIManager
`to kick off a native camera application to capture video?
`A. Lots of things are possible, but I think to answer that question
`I’d have to take a more detailed look at mobile media API as anyone
`would to answer that specific question. Unless they just knew it already.
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`Q. So then you also can’t tell me the converse? You can’t tell me
`that the mobile media API is not there just to allow the UIManager to
`kick off a native camera application on a phone?
`A. I can’t tell you either way without doing some investigation.
`
`Ex. 1052 at 172:2-16 (emphases added). Dr. Houh’s testimony underscores the
`
`opinion by Dr. Olivier that “Lahti does not disclose or even reasonably suggest that
`
`Lahti’s MobiCon application governs or impacts in any way the parameters by which
`
`the mobile device captures video data.” Ex. 2002 at ¶56.
`
`Petitioner’s new arguments regarding Lahti’s Mobile Media API and
`
`UIManager are premised upon speculation, and not actual teaching of Lahti, and
`
`should be disregarded.
`
`3.
`
`Petitioner’s attempt to reframe its original argument as
`including the SDK does not overcome Lahti’s shortcomings
`In an attempt to disguise its new invalidity arguments as part of its Petition,
`
`Petitioner restates its original argument concerning predetermined constraints, and
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`further contends:
`
`If MobiCon did not affect the manner in which video was recorded, and
`instead relied solely
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