Paper 57
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`TWITTER, INC.
`
`Petitioner
`
`v.
`
`VIDSTREAM, LLC
`
`Patent Owner
`
`_____________________________
`
`Case IPR2017-01133
`U.S. Patent No. 8,601,506
`(Claims 1, 4-8, 11, 13-15, 23-26, and 29-30)
`
`_____________________________
`
`PATENT OWNER VIDSTREAM LLC’s SUR-REPLY
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`I.
`II.
`
`III.
`
`V.
`
`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 ......................................................... 7
`3. The Board should disregard Petitioner’s Reply ............................ 11
`Petitioner’s New Arguments Do Not Demonstrate Capturing
`Video According to Predetermined Constraints ................................. 12
`1. Petitioner’s new exhibits and analyses are irrelevant to
`Lahti’s actual equipment ............................................................... 13
`2. Petitioner and its expert did not analyze the actual technology
`disclosed in Lahti .......................................................................... 14
`3. Petitioner’s attempt to reframe its original argument as
`including SDKs does not overcome Lahti’s shortcomings ........... 16
`PETITIONER’S OTHER LAHTI-BASED ARGUMENTS ARE
`UNAVAILING .............................................................................................. 19
`A.
`The Number of Phones Reviewed by Dr. Olivier is Irrelevant ........... 19
`B.
`Petitioner Neglects Relevant Portions of the Specification to
`Contend Lahti’s Disclosure is Equivalent to the ’506 Patent ............. 20
`Petitioner Mischaracterizes Lahti to Allege Compatibility With a
`Length Restriction ............................................................................... 21
`IV. PETITIONER IMPROPERLY USES HINDSIGHT TO CHERRY-
`PICK ONE ASPECT OF CONWAY AND IGNORE CONFLICTING
`DISCLOSURE ............................................................................................... 23
`PETITIONER DOES NOT DISPUTE THAT CURRENT TV DOES
`NOT TEACH CAPTURING VIDEO USING A PREDETERMINED
`LENGTH CONSTRAINT ............................................................................. 24
`VI. CONCLUSION .............................................................................................. 26
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`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) .................................................................................................. 4
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................ 3, 4, 11, 12
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`IPR2013-00517, 2015 Pat. App. LEXIS 2299 (PTAB 2015) ............................ 11
`K/S HIMPP v. Hear-Wear Techs.,
`LLC, 751 F.3d 1362 (Fed. Cir. 2014) ................................................................... 2
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 24, 25
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 127 S. Ct. 1727 (2007) ................................................................. 24
`In re Rijckaert,
`9 F.3d 1531 (Fed. Cir. 1993) .............................................................................. 18
`Southwire Co. v. Cerro Wire LLC,
`870 F.3d 1306 (Fed. Cir. 2017) .......................................................................... 18
`Statutes and Regulations
`35 USC § 312(a)(3) .................................................................................................... 4
`37 CFR § 42.6(a)(3) ........................................................................................... 11, 12
`37 CFR § 42.23(b) ................................................................................. 1, 2, 3, 12, 26
`37 CFR § 42.123(b) ..................................................................................... 1, 2, 3, 26
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`IPR2017-01133
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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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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`
`I.
`
`INTRODUCTION
`Petitioner’s Reply improperly adds new arguments and evidence that should
`
`be disregarded. Petitioner did not seek leave under 37 CFR § 42.123(b) for a late
`
`submission of supplemental information, but nevertheless submits new exhibits and
`
`theories with its Reply in order to: (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 an invalidity
`
`theory premised upon Lahti paired with a POSITA’s alleged additional knowledge.
`
`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 ¶42), he was unaware of any camera
`
`phone SDK that allowed external control of parameters such as frame rate. See 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 grounds, fails to supply features of each of independent
`
`claims 1, 23, and 26, including a server providing instructions to a client computing
`
`device to cause video data to be captured according to predetermined constraint(s)
`
`defined by the instructions. Paper 47 (“POR”) at 49-51. Despite impermissibly
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`introducing new invalidity grounds and arguments as purported rebuttal evidence,
`
`Petitioner’s Reply fails to plug Lahti’s gaps. Paper 50 (“Reply).
`
`Petitioner and Dr. Houh originally contended, without any support, that Lahti
`
`discloses capturing video according to predetermined constraints received from a
`
`server—such as frame rate and resolution parameters. However, as PO and Dr.
`
`Olivier responded, Lahti discloses no such thing. Lahti merely discloses an example
`
`of captured video, and notes the video has formatting consistent with frame rates and
`
`resolutions standard at the time of Lahti. Through evidence and argument added in
`
`violation of 37 CFR §§ 42.23(b) and 42.123(b), Petitioner doubles down on its
`
`unsupported position, contending various technologies not disclosed in Lahti (or the
`
`Petition) control video capture parameters. Petitioner’s new (and improper)
`
`arguments fare no better than its Petition. Lahti simply does not disclose video
`
`captured according to predetermined constraints received from a server, and
`
`Petitioner’s and Dr. Houh’s repeated references to a POSITA’s additional
`
`knowledge 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 “the Board cannot accept general
`
`conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement
`
`for documentary evidence for core factual findings in a determination of
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`patentability;” acknowledging “the well-established and time-honored requirement
`
`that rejections be supported by evidence”).
`
`Petitioner has not demonstrated that Lahti, or any other exhibit save the
`
`challenged patent, teaches capturing video data according to predetermined
`
`constraints from a server, which dooms its Petition. All challenged dependent claims
`
`depend from claims 1, 23, and 26, thus no asserted ground demonstrates the
`
`unpatentability of any challenged claim.
`
`PO respectfully asks the Board to uphold the patentability of claims 1, 4-8,
`
`11, 13-15, 23-26, and 29-30.
`
`II.
`
`PETITIONER’S FOCUS ON SYMBIAN, SDKs, AND APIs IS
`IMPROPER AND IRRELEVANT
`Petitioner’s Reply includes new arguments, explanations, and apparent
`
`alleged invalidity grounds, but such new arguments should have been in the Petition
`
`and are improper. See 37 CFR §§ 42.23(b), 42.123(b). Petitioner now advances
`
`theories about application program interfaces (“APIs”), SDKs, the Symbian
`
`operating system, and a POSITA’s knowledge that were wholly absent from the
`
`Petition. These arguments should not be considered, and all challenged claims
`
`should be 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
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`requirement that the initial petition identify ‘with particularity’ the ‘evidence that
`
`supports the grounds for the challenge to each claim.’” (citing 35 USC § 312(a)(3)));
`
`see also id. (“[T[he expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute.”).
`
`Further, Petitioner’s new arguments concerning potential phone capabilities
`
`are a red herring. Whether equipment in Lahti was capable of capturing video using
`
`multiple resolutions or frame rates is irrelevant and has no bearing on Lahti’s actual
`
`disclosure, which does not describe video capture according to predetermined
`
`constraints.
`
`Despite its thorough description of MobiCon, Lahti only ever describes
`
`capturing video using a phone’s standard parameters. Petitioner now cites Symbian
`
`documentation to hypothesize MobiCon implementation details found nowhere in
`
`Lahti. 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.
`
`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))).
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`
`A.
`
`Petitioner’s Improper New Arguments Should be Disregarded
`1.
`Petitioner’s new Reply arguments and exhibits
`In Reply, Petitioner newly contends Lahti uses application interfaces and
`
`software development kits for mobile phones to capture video according to
`
`predetermined constraints. For example, Petitioner’s Reply contends “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 this new position, the Reply and Ex. 1052 improperly
`
`advance previously undisclosed arguments concerning Lahti in view of a POSITA’s
`
`purported knowledge of APIs, SDKs, and the Symbian mobile operating system.
`
`See, e.g. Reply at 3, 6, 7, 10-12 (contending for the first time a POSITA would know
`
`certain SDKs and APIs); Ex. 1052 at ¶¶5, 7-8 (contending a POSITA would have
`
`knowledge of APIs and SDKs “for a wide variety of devices and operating systems,”
`
`including “detailed knowledge of the Symbian operating system”). Petitioner’s also
`
`advances new arguments and exhibits concerning the purported popularity of
`
`Symbian, and functionality within Symbian-related SDKs and APIs. See Reply at
`
`11-12 (relying upon Symbian’s features and alleged popularity); Ex. 1052 at ¶7
`
`(contending Symbian had a “dominant share” in the market), and ¶¶14, 16, 20
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`(purporting to describe Symbian’s API functions); and Exs. 1043, 1044, 1045, 1047,
`
`and 1048 (describing Symbian and related APIs and SDKs).
`
`Much of the Reply and Ex. 1052 focus on mobile operating systems—
`
`especially Symbian—and their programming interfaces. However, the Petition and
`
`original declaration (Ex. 1003) never reference Symbian or Symbian-related SDKs
`
`or APIs, and the only reference to any API in the Petition and Ex. 1003 is a passing
`
`reference in a Lahti quote relied upon for other, non-API related disclosure.
`
`Petitioner’s new SDK-theory appears to have been conceived by Dr. Houh
`
`during his first deposition. See POR at 21. But, as he admitted then, 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:
`
`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?
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`A. I can’t give you an example one way or the other without
`doing some investigation.
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`Ex. 2008 at 79:18-18:7 (emphases added). Having apparently performed an
`
`investigation after reviewing PO’s Response, Dr. Houh and Petitioner improperly
`
`update their invalidity theories.
`
`Rather than providing permitted rebuttal, Petitioner’s Reply and supporting
`
`declaration supplement Petitioner’s
`
`invalidity grounds and arguments by
`
`(1) focusing on disclosures in Lahti not relied upon in the Petition (see, e.g., Reply
`
`at 6, 10 (referencing “vendor provided SDKs”)), and (2) increasing a POSITA’s
`
`alleged knowledge to include detailed understanding of Symbian (see, e.g., Reply at
`
`7, 10, 11, 12). See also Exs. 1043, 1047, and 1048. While Petitioner attempts to
`
`frame its new disclosure as rebuttal to Dr. Olivier, the Board should view Petitioner’s
`
`disclosure for what it is: an invalidity theory not found within the Petition that goes
`
`well beyond rebuttal.
`
`2.
`Petitioner’s original argument
`The Petition contends that Lahti alone discloses the following portions of
`
`claim elements 1[c], 23[c] or 26[d]:
`
` 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;”
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` 23[c]: “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;”
`
` 26[d]: “provide instructions for use by the user devices for capturing
`video data in accordance with predetermined constraints.”
`
`POR at 49-51. Particularly, the Petition states:
`
`Lahti further discloses that MobiCon provides parameters by
`which the mobile device (on which the application is executing)
`captures video data. (Id., ¶105.) Lahti explains that the MobiCon app
`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.
`
`(Id., p. 6.)
`
`A POSITA would understand parameters such as video format,
`video resolution and video frame rate to be “predetermined constraints”
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`as that language is used in the ’506 Patent, which expressly includes
`these items as examples of predetermined constraints. (Ex. 1001 at
`4:40-43; 10:66-11:6.) Thus, Lahti teaches providing instructions that
`“cause the video data to be captured in accordance with predetermined
`constraints.” (Ex. 1003, ¶¶105-106.).
`
`Pet. at 27 (bolding original, underline added) (addressing element 1[c]); see also Pet.
`
`at 41 (addressing element 23[c] and referring to Petition’s explanation of element
`
`1[c]); and Pet. at 46 (addressing element 26[d] and referring to Petition’s explanation
`
`of element 1[c]). Ex. 1003 offers little more analysis than the above-quoted portion
`
`of the Petition. See Ex. 1003 at ¶¶105-106 (providing no analysis regarding any
`
`API, SDK, or Symbian).
`
`As shown, the Petition does not rely on Symbian or any Symbian-related SDK
`
`or API. Instead, as the Response describes, the Petition and Ex. 1003 conclude that
`
`because exemplary video recorded in Lahti had certain aspects (i.e. video format,
`
`resolution, and frame rate), that video must have been captured according to
`
`“predetermined constraints.” POR at 8-9, 20.
`
`While the Petition’s quote from Lahti references a “Mobile Media API,” the
`
`Petition does not explain the relevance of (or rely upon) this API. Indeed,
`
`Petitioner’s expert clearly testified he is not familiar with this API, and did not rely
`
`on its features:
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`Q. Did you consider the mobile media API documents in
`preparing your opinions?
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`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 relies upon Lahti’s passing statement
`
`that “[v]ideo recording… is relatively straightforward to implement with vendor
`
`provided SDKs” (Reply at 3, 6, 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; Petitioner should not be
`
`permitted to advance this new theory.
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`3.
`The Board should disregard Petitioner’s Reply
`The Trial Practice Guide is clear: “a reply or sur-reply that raises a new issue
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`or belatedly presents evidence may not be considered.” USPTO Trial Practice
`
`Guide Update
`
`(August 2018) at 14
`
`(updating §
`
`II.D.I)
`
`(available at
`
`https://go.usa.gov/xU7GP) (emphasis added); see also Intelligent Bio-Systems, 821
`
`F.3d at 1370 (addressing IPR2013-00517).
`
`This proceeding is similar to Intelligent Bio-Systems. See IPR2013-00517,
`
`Paper 87, 2015 Pat. App. LEXIS 2299, at *20 (PTAB Feb. 11, 2015). In Intelligent
`
`Bio-Systems, the Petition “urg[ed] obviousness based on” two references using a first
`
`rationale. Id. Petitioner’s Reply “offer[ed] a distinct new line of reasoning” using
`
`the same references. Id. Concluding this was improper, the Board noted “the Reply
`
`presents new issues by changing the unpatentability rationale from express reliance
`
`on [the reference’s] conditions, to asserting that those conditions would have been
`
`obvious to modify, as well as presenting new evidence to support the new rationale
`
`and explain the modifications.” Id. The Board also found the Reply improper under
`
`§ 42.6(a)(3) because it “relie[d] extensively on in-depth explanations and supporting
`
`documentary evidence presented in” a new declaration. Id. at *21-22. The Federal
`
`Circuit affirmed the Board’s decision to exclude arguments made in Reply.
`
`Intelligent Bio-Systems, 821 F.3d at 1370 (noting “the Board did not abuse its
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`discretion in finding that IBS’s reply brief and accompanying declaration were
`
`improper” under 37 CFR §§ 42.23(b), 42.6(a)(3)).
`
`As in Intelligent Bio-Systems, Petitioner’s Reply “offers a distinct new line of
`
`reasoning” based on previously cited references. This new reasoning—i.e., that
`
`Lahti uses SDKs to capture video according to predetermined constraints—is not in
`
`the Petition or Ex. 1003. Thus, pursuant to 37 CFR §§ 42.23(b) and Section II.D.I
`
`of the Trial Practice Guide, the Reply and its new arguments should be disregarded.
`
`Moreover, because the Reply relies upon new disclosure in Dr. Houh’s declaration
`
`(Ex. 1052) as well as Exhibits 1043, 1047, and 1048, the Reply is improper under
`
`§ 42.6(a)(3)). “While the 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 at 1369.
`
`B.
`
`Petitioner’s New Arguments Do Not Demonstrate Capturing Video
`According to Predetermined Constraints
`Even if the new invalidity arguments in Petitioner’s Reply are considered,
`
`Petitioner still has not demonstrated the unpatentability of any claim. Petitioner and
`
`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 and PO explained Lahti simply does not provide any description of video
`
`captured according to predetermined constraints from a server. POR at 9-10
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`(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 grounds.
`
`To further support his understanding, Dr. Olivier considered capabilities of
`
`Nokia phones, since Lahti mentions 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 these phones confirmed the sole example of video capture in Lahti used
`
`standard device parameters—the well-known “QCIF” standard format. Ex. 2002 at
`
`¶65. This supports that Lahti’s exemplary video was not captured according to
`
`predetermined constraints defined by MobiCon. Id. It is this confirmation that
`
`Petitioner and its expert focus on—but even if Petitioner’s new arguments are
`
`considered, they still fail to demonstrate disclosure in Lahti (or other prior art) of
`
`video captured according to predetermined constraints from a server.
`
`1.
`
`Petitioner’s new exhibits and analyses are irrelevant to Lahti’s
`actual equipment
`The Nokia 6630—the only device identified in Lahti—apparently used
`
`Symbian version 8.0. Exs. 2006, 2007; see also Ex. 1043 at 2 (indicating Nokia 6630
`
`used Symbian version 8.0a). Despite his purported analysis of the Symbian SDK,
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`Dr. Houh admits to only reviewing Symbian versions 7.0, 8.1, and 9.1. Ex. 1052 at
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`¶14. Further, Petitioner’s new Exhibits 1047 and 1048, purportedly detailing the
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`Symbian SDK, correspond only to version 8.1a. Petitioner has introduced no
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`evidence concerning Symbian version 8.0 (or 8.0a). Indeed, Dr. Houh admitted in
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`deposition he “couldn’t produce a version of the exact Symbian level as the Nokia
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`6630 phone.” Ex. 2010 at 17:12-15. As such, Petitioner’s reliance on Dr. Houh’s
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`analysis of purported functionality disclosed in Lahti is unreliable because his
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`analysis rested on a review of irrelevant and insufficient evidence. Reply at 11-12
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`(citing Exs. 1052 at ¶14, 1048 at 15-19).
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`2.
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`Petitioner and its expert did not analyze the actual technology
`disclosed in Lahti
`Petitioner and Dr. Houh’s reliance on Symbian version 8.1 is curious for
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`another reason: Lahti never specifically mentions Symbian or its APIs. Instead,
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`Lahti briefly mentions, without description, a “UIManager” and a “Mobile Media
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`API.” These software packages form the basis of an apparent new (albeit
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`unexplained) argument by Petitioner:
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`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.”
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`Reply at 3 (emphases added). However, despite passing references to the
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`“UIManager” and “Mobile Media API,” Petitioner does not detail how these
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`components capture video according to predetermined constraints from a server, as
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`required by all challenged claims. Petitioner’s failure of description is not
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`surprising, as Dr. Houh admitted he did not actually review Lahti’s identified
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`software, but instead relied upon Lahti’s vague description:
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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.
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`Ex. 1052 at 54:12-55:2 (emphases added). Indeed, when pressed, Dr. Houh admitted
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`that he cannot say whether the UIManager and Mobile Media API of Lahti indeed
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`provide predetermined constraints for video capture, or instead merely facilitate use
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`of a native camera application already installed on a phone (i.e., not from a server):
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`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.
`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.
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`Ex. 1052 at 172:2-16 (emphases added). This underscores Dr. Olivier’s opinion that
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`“Lahti does not disclose or even reasonably suggest that Lahti’s MobiCon
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`application governs or impacts in any way the parameters by which the mobile
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`device captures video data.” Ex. 2002 at ¶56.
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`Petitioner’s arguments regarding Mobile Media API and UIManager are pure
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`speculation and should be disregarded.
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`3.
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`Petitioner’s attempt to reframe its original argument as
`including SDKs does not overcome Lahti’s shortcomings
`To disguise its new arguments as part of its Petition, Petitioner restates its
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`original argument concerning predetermined constraints, and further contends:
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`If MobiCon did not affect the manner in which video was recorded, and
`instead relied solely on each device’s native recording capabilities,
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`there would be no reason for Lahti to disclose the identified frame rate,
`let alone disclose using SDKs to implement video recording.
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`Reply at 5-7 (emphasis added). Regardless of Petitioner’s new SDK reference, this
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`argument fails for the reasons articulated in the Response. “Lahti is a technical
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`paper, and thus Lahti’s ‘walkthrough’ ‘from the user perspective’ would be expected
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`to disclose the characteristics of the video data captured during application testing
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`and use, even if those characteristics were not impacted or controlled by the
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`MobiCon application.” POR at 13 (citing Ex. 2002 at ¶62). Petitioner’s new
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`interpretation of Lahti’s “vendor provided SDKs” in no way alters that merely
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`disclosing an exemplary video’s format provides no disclosure regarding video
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`capture according to predetermined constraints from a server.
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`Further, it is not surprising an SDK or API would enable access to a phone’s
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`camera. However, SDKs and APIs have varied functionality. Petitioner and Dr.
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`Houh leap to the conclusion that Lahti’s general disclosure of implementing “video
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`recording” using “vendor provided SDKs” necessarily means video capture
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`parameters settable via an SDK would be received from a server and set using
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`MobiCon—this goes too far and flies in the face of Lahti’s disclosure that “device
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`incompatibilities,… immature SDKs, and different operating system versions with
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`undocumented bugs[] mak[e] the development of an application like MobiCon
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`challenging.” Ex. 1006 at 3. This challenge suggests MobiCon would not attempt
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`IPR2017-01133
`U.S. Patent No. 8,601,506
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`to control more-complex aspects of video capture that vary between devices,
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`contrary to Dr. Houh’s and Petitioner’s assertion. See Ex. 2002 at ¶71 (“That the
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`video parameters of even some camera phones were not adjustable in 2006 further
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`suggests that the MobiCon application would not have been coded to even attempt
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`to govern or otherwise impact video capture parameters.”), and ¶72 (noting a
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`POSITA would desire “to minimize the variables in the code of the MobiCon
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`application that depended on the model of camera phone”).
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`Moreover Petitioner seems to contend that because video captured using
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`Lahti’s MobiCon application had a particular disclosed format, Lahti inherently
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`discloses capturing video according to predetermined constraints. However this is
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`not the law. “The mere fact that a certain thing may result from a given set of
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`circumstances is not sufficient to establish inherency.” In re Rijckaert, 9 F.3d 1531,
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`1534 (Fed. Cir. 1993) (emp