Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Samsung Electronics America, Inc.,
`Petitioner
`
`v.
`
`Prisua Engineering Corp.,
`Patent Owner.
`
`Patent No. 8,650,591
`Filing Date: March 8, 2011
`
`TITLE: VIDEO ENABLED DIGITAL DEVICES FOR EMBEDDING USER
`DATA IN INTERACTIVE APPLICATIONS
`
`DECLARATION OF EDWARD DELP III, PH.D.
`
`Inter Partes Review No. 2017-01188
`
`
`
`
`
`
`
`1
`
`Petitioner Samsung 1003
`
`

`

`TABLE OF CONTENTS
`
`PAGE
`
`I. 
`
`II. 
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A. 
`Education .............................................................................................. 1 
`B. 
`Career ................................................................................................... 1 
`C.  Materials Considered ............................................................................ 7 
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 8 
`A. 
`Person Having Ordinary Skill in the Art .............................................. 8 
`B. 
`Prior Art .............................................................................................. 12 
`C. 
`Identification of Grounds of Unpatentability ..................................... 13 
`D. 
`Broadest Reasonable Interpretations .................................................. 14 
`III.  THE ’591 PATENT ...................................................................................... 15 
`IV.  GROUND 1: CLAIMS 1, 2, 8, AND 11 ARE ANTICIPATED OR
`RENDERED OBVIOUS BY SENFTNER .................................................. 16 
`A.  Overview of Senftner ......................................................................... 16 
`B. 
`Challenged Claims ............................................................................. 17 
`V.  GROUND 2: CLAIMS 3 AND 4 ARE OBVIOUS OVER
`SENFTNER IN VIEW OF LEVOY ............................................................. 27 
`A.  Overview of Levoy ............................................................................. 27 
`B.  Motivation to Combine Senftner and Levoy ...................................... 29 
`C. 
`Challenged Claims ............................................................................. 30 
`VI.  GROUND 3: CLAIMS 1, 2, 8, AND 11 ARE OBVIOUS OVER
`SITRICK ....................................................................................................... 32 
`A.  Overview of Sitrick ............................................................................ 32 
`B. 
`Challenged Claims ............................................................................. 33 
`VII.  GROUND 4: CLAIMS 3 AND 4 ARE OBVIOUS OVER SITRICK
`IN VIEW OF LEVOY .................................................................................. 46 
`A.  Motivation to Combine Sitrick and Levoy ......................................... 46 
`B. 
`Challenged Claims ............................................................................. 47 
`VIII.  CONCLUDING STATEMENT ................................................................... 49 
`APPENDICES A-E .............................................................................................. A-1 
`
`
`
`
`2
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`I, Edward J. Delp III, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`
`I have been engaged by Petitioner Samsung Electronics
`
`America, Inc., (“Samsung”) to opine on certain matters regarding U.S. Patent No.
`
`8,650,591 (“’591 patent”). Specifically, this declaration addresses the validity of
`
`claims 1-4, 8, and 11 (the “Challenged Claims”) of the ’591 patent in light of the
`
`prior art. I receive $650 per hour for my services. No part of my compensation
`
`is dependent on my opinions or on the outcome of this proceeding. I have no
`
`financial interest, beneficial or otherwise, in any of the parties to this review.
`
`A. Education
`2.
`I received my Bachelor of Science degree in Electrical
`
`Engineering from the University of Cincinnati in 1973; my Master of Science
`
`degree from the University of Cincinnati in 1975; and my Ph.D. in electrical
`
`engineering from Purdue University in 1979. In May 2002, I received an
`
`Honorary Doctor of Technology from the Tampere University of Technology in
`
`Tampere, Finland; this award cited my work in signal processing. My C.V. is
`
`appended to the end of this Declaration as Appendix E.
`
`B. Career
`3.
`I am a Distinguished Professor in the School of Electrical and
`
`1
`
`
`
`3
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`Computer Engineering at Purdue University in West Lafayette, Indiana. I also
`
`have a joint appointment in the Weldon School of Biomedical Engineering. My
`
`professorship is sponsored by the Charles William Harrison endowment, which
`
`donated the $1.5 million dollars to Purdue to establish my position. My official
`
`title is the Charles William Harrison Distinguished Professor of Electrical and
`
`Computer Engineering. There are 81 Distinguished Professors at Purdue
`
`University out of a total of 10,900 faculty members.
`
`4.
`
`Purdue University is one of the largest and oldest engineering
`
`schools in the United States. It is consistently ranked in the top 10 engineering
`
`schools in the Unites States. One out of every 14 engineers in the United States
`
`is a Purdue graduate. Purdue graduates have had a tremendous impact on
`
`engineering developments and practices in the U.S. For example, the first (Neil
`
`Armstrong) and last (Eugene Cernan) persons to walk on the moon were Purdue
`
`graduates. Two of the engineers who won Emmy awards for their work in
`
`imaging technology, Bill Beyers and Lauren Christopher, are Purdue graduates.
`
`5.
`
`My expertise includes digital signal processing, the processing
`
`and coding of image, video, and audio signals, and embedded and mobile
`
`applications. The image compression algorithm I developed as part of my Ph.D.
`
`thesis, block truncation coding, has been used extensively in many applications
`
`2
`
`
`
`4
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`and was one of the final candidates of the JPEG compression standard. It was
`
`used by NASA to send images back to Earth from the Mars Pathfinder
`
`MicroRover, which landed safely on Mars on July 4, 1997.
`
`6.
`
`I am a Professional Engineer. I am registered in the State of
`
`Ohio (registration number E-45364).
`
`7.
`
`As a professor at Purdue University and the University of
`
`Michigan, I have performed extensive research relating to signal, image, and
`
`video processing techniques and embedded systems. Over the last ten years, I
`
`have supervised the research and preparation of more than 45 Ph.D. theses
`
`relating to topics in signal, image, and video processing. As part of my
`
`continuing research in the field of signal, image, and video processing, I have
`
`studied new developments in the field of signal, image, and video processing and
`
`embedded systems, analyzed the publications of other leaders in this field, and
`
`participated in industry organizations chartered to study the processing of images,
`
`video, and audio signals. My experience in the field of signal processing
`
`includes over 30 years of directed research, as well as the materials taught in my
`
`classes at Purdue University and the University of Michigan.
`
`8.
`
`I have been studying subject matter relating to image and video
`
`processing since approximately 1975, in connection with grants provided by the
`
`3
`
`
`
`5
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`National Science Foundation, the National Institutes of Health, the Department of
`
`Defense, the Department of Homeland Security, Department of Energy and
`
`various corporations, including Texas Instruments, Samsung, Motorola, Nokia,
`
`Google and Thomson.
`
`9.
`
`I also have been elected a Fellow of the Institute of Electrical
`
`and Electronics Engineers (IEEE), the Society for Imaging Science and
`
`Technology (IS&T), the International Society for Optical Engineering (SPIE),
`
`and the American Institute of Medical and Biological Engineering. In 2004, I
`
`received the Technical Achievement Award from the IEEE Signal Processing
`
`Society for my work in image and video compression and multimedia security.
`
`In 2008, I received the Society Award from IEEE Signal Processing Society
`
`(SPS). This is the highest award given by the SPS.
`
`10.
`
`In 2009, I received the Purdue College of Engineering Faculty
`
`Excellence Award for Research.
`
`11.
`
`In 2015, I was named Electronic Imaging Scientist of the Year
`
`by the IS&T and SPIE. The Scientist of the Year award is given annually to a
`
`member of the electronic imaging community who has demonstrated excellence
`
`and commanded the respect of his/her peers by making significant and substantial
`
`contributions to the field of electronic imaging via research, publications and
`
`4
`
`
`
`6
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`service. I was cited for my contributions to multimedia security and image and
`
`video compression.
`
`12.
`
`I received the 2017 SPIE Technology Achievement Award. The
`
`SPIE Technology Achievement award is awarded annually to recognize
`
`outstanding
`
`technical accomplishment
`
`in optics, electro-optics, photonic
`
`engineering, or
`
`imaging. The SPIE Awards Committee has made
`
`this
`
`recommendation in recognition of my pioneering work in multimedia security
`
`including watermarking and device forensics and for his contributions to image
`
`and video compression.
`
`13.
`
`In 2016, I received the Purdue College of Engineering
`
`Mentoring Award for my work in mentoring junior faculty and women graduate
`
`students.
`
`14.
`
`In 1990, I received the Honeywell Award and in 1992 the D. D.
`
`Ewing Award, both for excellence in teaching. In 2001, I received the Raymond
`
`C. Bowman Award for fostering education in imaging science from the Society
`
`for Imaging Science and Technology (IS&T). In 2004, I received the Wilfred
`
`Hesselberth Award for Teaching Excellence. In 2000, I was selected a
`
`Distinguished Lecturer of the IEEE Signal Processing Society, and I gave
`
`lectures in France, Spain, and Australia on signal, image, and video processing. I
`
`5
`
`
`
`7
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`am a Distinguished Professor in the School of Electrical and Computer
`
`Engineering at Purdue University in West Lafayette, Indiana. I also have a joint
`
`appointment
`
`in
`
`the Weldon School of Biomedical Engineering.
`
` My
`
`professorship is sponsored by the Charles William Harrison endowment, which
`
`donated the $1.5 million dollars to Purdue to establish my position. My official
`
`title is the Charles William Harrison Distinguished Professor of Electrical and
`
`Computer Engineering. There are 81 Distinguished Professors at Purdue
`
`University out of a total of 10,900 faculty members.
`
`15.
`
`I am a Professional Engineer. I am registered in the State of
`
`Ohio (registration number E-45364).
`
`16.
`
`As a professor at Purdue University and the University of
`
`Michigan, I have performed extensive research relating to signal, image, and
`
`video processing techniques and embedded systems. Over the last ten years, I
`
`have supervised the research and preparation of more than 45 Ph.D. theses
`
`relating to topics in signal, image, and video processing. As part of my
`
`continuing research in the field of signal, image, and video processing, I have
`
`studied new developments in the field of signal, image, and video processing and
`
`embedded systems, analyzed the publications of other leaders in this field, and
`
`participated in industry organizations chartered to study the processing of images,
`
`6
`
`
`
`8
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`video, and audio signals. My experience in the field of signal processing
`
`includes over 30 years of directed research, as well as the materials taught in my
`
`classes at Purdue University and the University of Michigan.
`
`C. Materials Considered
`17.
`The analysis that I provide in this Declaration is based on my
`
`experience, as well as the documents I have considered, including U.S. Patent
`
`No. 8,650,591 (the ’591 patent) (Ex. 1001). I have also reviewed the prosecution
`
`history of the ’591 patent and the materials listed below:
`
`LIST OF EXHIBITS
`
`Document
`U.S. Patent No. 8,650,591 (“’591 patent”)
`File history of U.S. Patent No. 8,650,591 (“’591 FH”)
`Deposition of Dr. Yolanda Prieto, Prisua Engineering
`Corp. v. Samsung Electronics Co., Ltd., Case No. 16-cv-
`21761-KMM (Jan. 17, 2017)
`Joint Claim Construction Statement, Prisua Engineering
`Corp. v. Samsung Electronics Co., Ltd., Case No. 16-cv-
`21761-KMM, Docket No. 40
`U.S. Patent No. 7,460,731 to Senftner et al. (“Senftner”)
`U.S. Patent Application Publication No. 2005/0151743 to
`Sitrick (“Sitrick”)
`U.S. Patent Application Publication No. 2009/0309990 to
`Levoy et al. (“Levoy”)
`Negahdaripour Decl. ISO Patent Owner’s Opening Claim
`Construction Brief (“Negahdaripour Decl.”)
`U.S. Patent Application Publication No.
`2006/0097991
`
`7
`
`Exhibit Number
`1001
`1002
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`9
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`Exhibit Number
`
`Document
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 7,307,623 to Enomoto
`
`U.S. Patent No. 4,686,332 to Greanias et al.
`
`Edward Delp Decl. ISO Petitioner’s Responsive
`Claim Construction Brief
`
`1014
`
`U.S. Patent Application Publication No.
`2008/0148167 to Zeev Russak et al.
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`18.
`Attorneys for the Petitioner have explained certain legal
`
`principles to me that I have relied upon in forming my opinions set forth in this
`
`report. I have also relied on my personal knowledge gained through experiences
`
`and exposure to the field of patent law.
`
`A.
`19.
`
`Person Having Ordinary Skill in the Art
`
`I understand that my assessment of claims of the ’591 patent
`
`must be undertaken from the perspective of what would have been known or
`
`understood by a person having ordinary skill in the art, reading the ’591 patent on
`
`its relevant filing date and in light of the specification and file history of the ’591
`
`patent. I will refer to such a person as a “POSITA.”
`
`20.
`
`The ’591 patent claims priority to U.S. Provisional Patent
`
`Application No. 61/311,892, filed March 9, 2010. For purposes of this
`8
`
`
`
`10
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`declaration only, I have assumed that all the Challenged Claims are entitled to a
`
`priority date of March 9, 2010.
`
`21.
`
`Counsel has advised me that, to determine the appropriate level
`
`of one of ordinary skill in the art, the following four factors may be considered:
`
`(a) the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (b) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (c) the educational level of
`
`active workers in the field; and (d) the educational level of the inventor.
`
`22.
`
`I am well acquainted with the level of ordinary skill required to
`
`implement the subject matter of the ’591 patent. I have direct experience with
`
`and am capable of rendering an informed opinion on what the level of ordinary
`
`skill in the art was for the relevant field as of March 9, 2010.
`
`23.
`
`The ’591 patent describes the field of invention as follows:
`
`The invention disclosed broadly relates to the field of data base
`administration and more particularly relates to the field of altering
`index objects in tables.
`
`(Ex. 1001 at 1:23-26.)
`
`24.
`
`As an example, claim 1 is a method claim. It recites:
`
`9
`
`
`
`11
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`1. An interactive media apparatus for generating a displayable edited
`video data stream from an original video data stream, wherein at least
`one pixel in a frame of said original video data stream is digitally
`extracted to form a first image, said first image then replaced by a
`second image resulting from a digital extraction of at least one pixel in
`a frame of a user input video data stream, said apparatus comprising:
`
`an image capture device capturing the user input video data stream;
`
`an image display device displaying the original video stream;
`
`a data entry device, operably coupled with the image capture device
`and the image display device, operated by a user to select the at least
`one pixel in the frame of the user input video data stream to use as the
`second image, and further operated by the user to select the at least
`one pixel to use as the first image;
`
`wherein said data entry device is selected from a group of devices
`consisting of: a keyboard, a display, a wireless communication
`capability device, and an external memory device;
`
`a digital processing unit operably coupled with the data entry device,
`said digital processing unit performing:
`
`identifying the selected at least one pixel in the frame of the user input
`video data stream;
`
`extracting the identified at least one pixel as the second image;
`
`10
`
`
`
`12
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`storing the second image in a memory device operably coupled with
`the interactive media apparatus;
`
`receiving a selection of the first image from the original video data
`stream;
`
`extracting the first image;
`
`spatially matching an area of the second image to an area of the first
`image in the original video data stream, wherein spatially matching
`the areas results in equal spatial lengths and widths between said two
`spatially matched areas; and
`
`performing a substitution of the spatially matched first image with the
`spatially matched second image to generate the displayable edited
`video data stream from the original video data stream.
`
`(Ex. 1001, claim 1.)
`
`25.
`
`The ʼ591 patent is directed to a system that creates a new
`
`composite video by substituting a portion of an original video data stream with an
`
`image in a user input video data stream. To understand the specification and to
`
`make and use the claimed inventions without undue experimentation, one of
`
`ordinary skill would have at least an engineer with a Bachelor of Science degree
`
`and at least three years of imaging and signal processing experience or would
`
`have earned a Master’s Degree in Electrical Engineering and at least two years of
`
`11
`
`
`
`13
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`professional experience in signal, image, and video processing.
`
`B.
`26.
`
`Prior Art
`
`I understand that the law provides categories of information that
`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`Prior to the American Invents Act (“pre-AIA”), I understand that, to be prior art
`
`to a particular patent claim under 35 U.S.C. Section 102(a), a reference must
`
`have been known or used in this country, or patented or described in a printed
`
`publication before the priority date of the Challenged Claims. To be prior art
`
`under pre-AIA 35 U.S.C. Section 102(b), I further understand that a reference
`
`must have been in public use or on sale in this country, or patented or described
`
`in a printed publication more than one year prior to the date of application for the
`
`Challenged Claims. To be prior art under pre-AIA 35 U.S.C. Section 102(e), I
`
`further understand that a patent application must have been published or a patent
`
`application subsequently granted must have been filed before the priority date. I
`
`also understand that the POSITA is presumed to have knowledge of all relevant
`
`prior art. Below is a table identifying the main prior art references that will be
`
`discussed in detail in this declaration.
`
`12
`
`
`
`14
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`Table 1
`
`Reference
`“Senftner”
`
`Title
`U.S. Patent No. 7,460,731 to Senftner et al.
`(“Senftner”)
`
`“Sitrick”
`
`“Levoy”
`
`U.S. Patent Application Publication No.
`2005/0151743 to Sitrick (“Sitrick”)
`
`U.S. Patent Application Publication No.
`2009/0309990 to Levoy et al. (“Levoy”)
`
`Date
`Issued
`Dec. 2,
`2008
`Published
`Jul. 14,
`2005
`Published
`Dec. 17,
`2009
`
`
`C.
`27.
`
`Identification of Grounds of Unpatentability
`I understand that the Petitioner is requesting inter partes review
`
`of claims 1-4, 8 and 11 of the ’591 patent under the grounds set forth in Table 2,
`
`below.
`
`13
`
`
`
`15
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`Table 2
`
`Ground of
`Unpatentability
`
`’591 Patent
`Claim(s)
`
`Ground 1 
`
`1, 2, 8, and 11 
`
`Ground 2
`
`3 and 4
`
`Ground 3 
`
`1, 2, 8, and 11
`
`Ground 4 
`
`3 and 4
`
`Basis for Rejection
`
`Anticipated or rendered obvious by U.S.
`Patent No. 7,460,731 (“Senftner”) 
`
`Rendered obvious by Senftner in view of
`U.S. Patent Application Publication No.
`2009/0309990 (“Levoy”)
`
`Rendered obvious by U.S. Patent
`Application Publication No.
`2005/0151743 (“Sitrick”) 
`
`Rendered obvious by Sitrick in view of
`Levoy
`
`D. Broadest Reasonable Interpretations
`28.
`I understand that, in an inter partes review, the claim terms are
`
`to be given their broadest reasonable interpretation (BRI) in light of the
`
`specification. See 37 C.F.R. § 42.100(b).
`
`29.
`
`In performing my analysis and rendering my opinions, I have
`
`interpreted claim terms for which the Petitioner has not proposed a BRI by giving
`
`them the ordinary meaning they would have to a POSITA, reading the ʼ591
`
`patent with its priority filing date (March 9, 2010) in mind, and in light of its
`
`specification and prosecution history.
`
`14
`
`
`
`16
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`III. THE ’591 PATENT
`30.
`As indicated on its face, the ’591 patent issued from U.S.
`
`Application No. 13/042,955, which was filed March 8, 2011. The ’491 patent
`
`claims priority to U.S. provisional application No. 61/311,892, filed on March 9,
`
`2010.
`
`31.
`
`The ʼ591 patent is directed to a system that creates a new
`
`composite video by substituting a portion of an original video data stream with an
`
`image in a user input video data stream. FIG. 3 (reproduced below) shows the
`
`preferred “image substitution” described by the patent. According to the
`
`specification, “a user input 150 of a photo image of the user used to replace the
`
`face of the image shown on the device 108. The user transmits the photo image
`
`150 by wired or wireless means to the device 108. The image substitution is
`
`performed and the device 108 shows the substituted image 190.” (Ex. 1001 at
`
`2:66-3:4 (emphasis added)).
`
`15
`
`
`
`17
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`(Ex. 1001 at Fig. 3.)
`
`
`
`IV. GROUND 1: CLAIMS 1, 2, 8, AND 11 ARE ANTICIPATED OR
`RENDERED OBVIOUS BY SENFTNER
`A. Overview of Senftner
`32.
`Senftner relates to the creation of personalized video through
`
`partial image replacement in an original video. (Ex. 1006, Abstract). Senftner is
`
`entitled “Personalizing a video.”
`
`33.
`
`Senftner discloses systems and methods for replacing images
`
`16
`
`
`
`18
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`and videos of an “original actor” or “target” with a “new actor” or “target
`
`replacement.” (Id. at 2:33-54; 5:42-47; 9:25-31; FIG. 1).
`
`34.
`
`Figure 1 in Senftner lays out several steps: process 100 relates to
`
`obtaining images of a new actor; process 200 relates to preparing an original
`
`video, having the original actor, for substitution; and process 300 relates to
`
`making a personalized video based on processes 100 and 200. (Id. at 9:32-52).
`
`Motion correction can also be applied. (Id. at 6:10-14; 17:10-23).
`
`B. Challenged Claims
`for generating a
`[1-PREAMBLE-i] An
`interactive media apparatus
`displayable edited video data stream from an original video data stream,
`
`35.
`
`In my opinion, Senftner discloses the first part of the preamble
`
`of claim 1. (See, e.g., Ex. 1006, Abstract; 5:20-25; 2:41-54).
`
`[1-PREMABLE-ii] . . . wherein at least one pixel in a frame of said original
`video data stream is digitally extracted to form a first image, said first image
`then replaced by a second image resulting from a digital extraction of at least
`one pixel in a frame of a user input video data stream, said apparatus
`comprising:
`
`36.
`
`In my opinion, Senftner discloses the second part of the
`
`preamble of claim 1. (See, e.g., id. at 2:41-54; 5:15-28; 5:33-40; 6:8-14; 8:67-
`
`9:1; 9:6-9; 10:3-28; 11:7-12; 11:42-59; 12:27-45; 13:15-25; 17:46-49; 8:52-54;
`
`17
`
`FIGs. 1-3).
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`19
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`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`[1a] an image capture device capturing the user input video data stream;
`
`37.
`
`In my opinion, Senftner discloses limitation 1a. (See, e.g., id. at
`
`17:45-48; FIGs. 1, 8-11).
`
`[1b] an image display device displaying the original video stream;
`
`38.
`
`In my opinion, Senftner discloses limitation 1b. (See, e.g., id. at
`
`21:6-8; FIG. 10).
`
`[1c-i] a data entry device, operably coupled with the image capture device and
`the image display device
`
`39.
`
` In my opinion, Senftner discloses limitation 1c. (See, e.g., id. at
`
`20:24, 20:35-36; 20:62-64; 21:5-7; FIGs. 10-11).
`
`[1c-ii] . . . operated by a user to select the at least one pixel in the frame of the
`user input video data stream to use as the second image, and further operated
`by the user to select the at least one pixel to use as the first image;
`
`40.
`
`In my opinion, Senftner discloses limitation 1c-ii. (See, e.g., id.
`
`at 2:8-10; 5:5-6; 2:33-45; 8:52-67; 10:3-16; 11:57; 12:37-45; 17:23-24; 18:1-18;
`
`18:45-46; 20:24-39; 20:56-57; FIGs. 8-11).
`
`41.
`
`In particular, a POSITA would understand that each frame of a
`
`digital video is comprised of pixels and each frame of a video contains a 2D
`
`image. (Ex. 1006 at 2:8-10; 11:57).
`
`42.
`
`A POSITA would also recognize that the pixel information of
`
`the first image and the second image must be used by the system because the
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`20
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`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`disclosed replacement process in Senftner manipulates a digital video (original
`
`video data stream) on a pixel-by-pixel and frame-by-frame basis. (Ex. 1006 at
`
`8:52-67).
`
`43.
`
`A POSITA would understand that when a 2D image (a second
`
`image), primarily capturing the new actor’s face, is selected by the requester for
`
`the actor modeling process, the requester also necessarily selects the at least one
`
`pixel comprising the selected 2D image. (Ex. 1006 at 2:41-45; 10:3-16; Fig. 10;
`
`20:24-39.)
`
`44.
`
`Likewise, a POSITA would understand that when the requester
`
`selects an original object (target/first image) to be replaced by a target
`
`replacement (second image), the requester necessarily selects at least one pixel
`
`comprising the image of the original object. (Ex. 1006 at 2:41-45; 8:60-64; Fig.
`
`10; 20:24-39.)
`
`[1d] wherein said data entry device is selected from a group of devices
`consisting of: a keyboard, a display, a wireless communication capability
`device, and an external memory device;
`
`45.
`
` In my opinion, Senftner discloses limitation 1d. (See, e.g., id.
`
`at 20:65-21:11).
`
`[1e] a digital processing unit operably coupled with the data entry device, said
`digital processing unit performing:
`
`46.
`
`In my opinion, Senftner discloses limitation 1e. (See, e.g., id. at
`19
`
`
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`21
`
`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`20:56-21:11; FIGs. 10-11).
`
`[1e-i] identifying the selected at least one pixel in the frame of the user input
`video data stream;
`
`47.
`
`In my opinion, Senftner discloses limitation 1e-i. (See, e.g., id.
`
`at 10:3-12; 12:27-45, 18:1-22; 8:52-9:5; 8:60-62).
`
`[1e-ii] extracting the identified at least one pixel as the second image;
`
`48.
`
`In my opinion, Senftner discloses limitation 1e-ii. (See, e.g., id.
`
`at 10:3-12; 4:15-24).
`
`49.
`
`I also understand that Patent Owner may argue for a narrow
`
`construction of “digital extraction,” in which case one or more pixels must
`
`actually be removed from the data stream. Although I do not agree that this
`
`narrow interpretation is consistent with the language of the claim, and I do not
`
`see any support for such an interpretation in the specification of the ’591 patent,
`
`it is nonetheless my opinion that Senftner discloses this limitation.
`
`50.
`
`In particular, a POSITA would understand that there are two
`
`ways to obtain new actor images. One way, which Senftner discloses (see id. at
`
`10:3-12 and 4:15-24), is copying the applicable pixels of a new actor’s image
`
`during the modeling process. The second way would be to extract the necessary
`
`data from the new actor’s data stream, including the pixels associated with the
`
`new actor’s image. Senftner discloses removal of the selected target in the
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`22
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`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`
`original video data stream. (See, e.g., id. at 2:51-54; 2:58-62; 3:22-28.)
`
`51.
`
`A POSITA would recognize that it is simple and routine to
`
`change from a “copying” operation to a “cutting” operation, i.e., for “copying”
`
`the original pixels are not deleted, while for “cutting” the original pixels are
`
`deleted. (See, e.g., Ex. 1014 at ¶¶ 2-16.) Thus, in my opinion, Senftner still
`
`discloses, teaches, and suggests to a POSITA the “extracting’ step of limitation
`
`1e-ii, because a POSITA would consider both copying and cutting the associated
`
`pixel data to be simple, routine, and known alternatives.
`
`[1e-iii] storing the second image in a memory device operably coupled with
`the interactive media apparatus;
`
`52.
`
`In my opinion, Senftner discloses limitation 1e-iii. (See, e.g., id.
`
`at 17:65-67; 18:11-12; 21:23-29; FIG. 8).
`
`[1e-iv] receiving a selection of the first image from the original video data
`stream;
`
`53.
`
`In my opinion, Senftner discloses limitation 1e-iv. (See, e.g., id.
`
`at 2:41-44; 9:6-9; 10:29-12:17; FIGs. 1-2).
`
`[1e-v] extracting the first image;
`
`54.
`
`In my opinion, Senftner discloses limitation 1e-v. (See, e.g., id.
`
`at 2:33-54; 5:42-59; 6:8-14; 8:58-9:5; 11:7-12).
`
`
`
`[1e-vi] spatially matching an area of the second image to an area of the first
`image in the original video data stream, wherein spatially matching the areas
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`

`

`Declaration of Edward Delp
`Petition for Inter Partes Review of
`U.S. Patent No. 8,650,591
`
`results in equal spatial lengths and widths between said two spatially matched
`areas; and
`
`55.
`
`In the district court case between the Patent Owner and the
`
`Petitioner (“Litigation”), I submitted my declaration in support of Petitioner’s
`
`responsive claim construction brief, which is attached as Exhibit 1013. In the
`
`Litigation, I found the “spatially matching” term to be indefinite. My opinion
`
`still remains that this term is indefinite. However, I have been instructed by
`
`counsel that, in an IPR, all claimed terms must be construed to compare them to
`
`the prior art. In this context only, an assumed interpretation of the indefinite term
`
`is used—i.e., a “spatially matching” involves aligning pixels in the spatial
`
`domain or resizing of one image to the size of another image such that the two
`
`images are matched in the X-Y dimensions (length-width). Under this assumed
`
`interpretation, I find the “spatially matching” term of claims 1 and 11, disclosed,
`
`taught, or suggested, as provided below.
`
`56.
`
`In my opinion, Senftner discloses limitation 1e-vi. (See, e.g., id.
`
`at 10:29-46; 12:27-45).
`
`[1e-vii] performing a substitution of the spatially matched first image with the
`spatially matched second image to generate the displayable edited video data
`stream from the