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 to Prieto
`
`IPR Case No. IPR2017-01188
`
`
`
`PETITIONER’S REPLY
`
`
`
`
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
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`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS ........................................................................................... iv 
`INTRODUCTION .......................................................................................... 1 
`I. 
`OVERVIEW OF THE ’591 PATENT AND SITRICK ................................. 1 
`II. 
`III.  CLAIM CONSTRUCTION ........................................................................... 4 
`“digital extraction” ............................................................................... 4 
`A. 
`Other constructions............................................................................... 4 
`B. 
`IV.  ARGUMENT .................................................................................................. 6 
`The Board should give little or no weight to Dr. Prieto’s
`A. 
`Declaration ........................................................................................... 6 
`Dr. Prieto’s testimony is not credible ................................................... 7 
`1.
`Dr. Prieto’s testimony that Sitrick’s general purpose
` 
`computers are “mainframes” ...................................................... 7 
`Dr. Prieto’s testimony that claim 11 requires unclaimed
`elements ..................................................................................... 9 
`Dr. Prieto’s conflicting testimony about a POSITA’s
`knowledge of processor capabilities .......................................... 9 
`Dr. Prieto’s testimony regarding user-selected images ........... 10 
`4.
` 
`Petitioner’s responses to the POR ...................................................... 10 
`1.
`The “Overview” sections mischaracterize the evidence
` 
`and Petitioner’s arguments ....................................................... 10 
`Sitrick discloses “extracting the first image from the
`original video data stream” ...................................................... 12 
`Sitrick discloses “extracting the identified at least one
`pixel as the second image” ....................................................... 14 
`Sitrick discloses “using a data entry device operably
`coupled with the digital video capture device and a
`digital display device” .............................................................. 17 
`Sitrick discloses “selecting the at least one pixel in a
`frame of the user input video stream” ...................................... 18 
`
`B. 
`
`C. 
`
`2.
` 
`
`3.
` 
`
`2.
` 
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`3.
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`4.
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`5.
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`6.
` 
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`
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`Petitioner’s Reply
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`7.
` 
`
`V. 
`
`Sitrick discloses “using a digital processing unit operably
`coupled with the data entry device performing” ...................... 20 
`Sitrick discloses “identifying the selected at least one
`pixel in the frame of the input video stream” .......................... 22 
`Sitrick discloses “spatially matching…” ................................. 23 
`8.
` 
`Sitrick discloses “computing motion vectors…” ..................... 24 
`9.
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`Sitrick discloses “applying motion vectors…” ........................ 25 
`10.
` 
`THE PATENTABILITY OF ALL CHALLENGED CLAIMS MUST
`BE ADDRESSED IN THE BOARD’S FINAL DECISION ....................... 26 
`VI.  CONCLUSION ............................................................................................. 29 
`
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`iii
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
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`TABLE OF EXHIBITS
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`Exhibit
`1001
`
`Description
`U.S. Patent No. 8,650,591 (“’591 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
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`1012
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`1013
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`1014
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`
`
`File history of U.S. Patent No. 8,650,591
`
`Declaration of Edward Delp Regarding U.S. Patent No.
`8,650,591
`
`Prisua Engineering Corp. v. Samsung Electronics Co., Ltd., et
`al., CA No. 1:16-cv-21761-KMM, Deposition Transcript of
`Dr. Yolanda Prieto (January 17, 2017)
`
`Prisua Engineering Corp. v. Samsung Electronics Co., Ltd., et
`al., CA No. 1:16-cv-21761-KMM, Joint Claim Construction
`and Prehearing Statement (November 21, 2016)
`
`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
`
`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
`
`U.S. Patent Application Publication No. 2008/0148167 to
`Zeev Russak et al.
`
`iv
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`MPEG | The Moving Picture Experts Group website, (see
`http://mpeg.chiariglione.org/)
`
`Affidavit of Ronald J. Pabis in Support of Motion for Pro Hac
`Vice Admission
`
`Reply Declaration of Edward J. Delp, Ph.D.
`Markman Order, Prisua Engineering Corp. v. Samsung
`Electronics CO., Ltd., Case No. 1:16-cv-21761-KMM, dated
`September 6, 2017
`
`Excerpt from Plaintiff’s Interrogatory Responses, Prisua
`Engineering Corp. v. Samsung Electronics Co., Ltd., Case
`No. 1:16-cv-21761-KMM, dated June 19, 2017
`
`Deposition Transcript of Dr. Yolanda Prieto, dated April 11,
`2018
`
`Hearn, Computer Graphics, C Version (2d ed. 1997)
`
`Foley, Computer Graphics, Principles and Practice (2d ed.
`1995)
`
`v
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`Petitioner’s Reply
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`
`I.
`
`INTRODUCTION
`
`Petitioner, Samsung Electronics America, Inc., submits the following Reply
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`to the Board’s Institution Decision (“Decision”) and Patent Owner’s Response
`
`(“POR”). The Decision instituted trial as to claim 11 of the ’591 patent in view of
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`Petitioner’s showing of obviousness over the Sitrick reference. (Decision at 38.)
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`The Board should maintain that aspect of its initial decision as the POR fails to
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`show that any of the Board’s initial findings were incorrect.
`
`The POR raises numerous arguments, all of which are based on the
`
`testimony of its sole owner and the ’591 patent’s named inventor, Dr. Prieto. As
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`shown below, Dr. Prieto’s testimony is not credible. Further, the arguments set
`
`forth in the POR lack technical merit and mischaracterize the prior art and the
`
`evidence. Since Patent Owner’s arguments fail to rebut Petitioner’s showing of
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`obviousness, claim 11 of the ’591 patent should be canceled.
`
`Further, in view of the Supreme Court’s decision in SAS Institute, Petitioner
`
`respectfully requests the Board address all challenged claims in its final written
`
`decision. SAS Inst. v. Iancu, 584 U.S. __, No. 16-969 (2018).
`
`II. OVERVIEW OF THE ’591 PATENT AND SITRICK
`Claim 11 of the ʼ591 patent is directed to a method that creates a new
`
`composite video by substituting a portion of an original video data stream with an
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`Patent No. 8,650,591
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`image from a user input video data stream. (Petition at 5-6.) FIG. 3 of the ’591
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`Petitioner’s Reply
`
`
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`patent shows the preferred “image substitution” described by the patent where “a
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`user input 150 of a photo image of the user used to replace the face of the image
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`shown on the device 108. The user transmits the photo image 150 by wired or
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`wireless means to the device 108. The image substitution is performed and the
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`device 108 shows the substituted image 190.” (Ex. 1001 at 2:66-3:4 (emphasis
`
`added).)
`
`(Id. at Fig. 3.)
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`Patent No. 8,650,591
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`Petitioner’s Reply
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`Like the ’591 patent, Sitrick discloses computerized systems/methods in
`
`which “a user selected image [a second image] is selectively integrated into a
`
`predefined presentation in place of a tracked portion [a first image] of the
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`predefined audiovisual presentation [an original video data stream].” (Ex. 1007-
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`Sitrick at ¶11.) Sitrick’s Fig. 1 is a “system block diagram of the present invention”
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`and provides a high-level overview of the image substitution process, substituting a
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`facial image from an external source of user image content into an original video
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`(program video 120) to create an edited video (output video 190).
`
`
`
`(Id. at Fig. 1.)
`
`Sitrick discloses that the user’s image (137) is captured and provided to a
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`subsystem 100 via user image content 130. A program video 120 is also provided
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`to subsystem 100 via program content 110. These two contents (110 and 130) are
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`merged via the subsystem 100, after which output content 170 is provided to a
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`Petitioner’s Reply
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`
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`display device to show output video 190. (Id. at ¶31.)
`
`“The output video 190 consists of a processed version of the program
`video 120 selectively processed by the subsystem 100 such that the
`representation 123 has been replaced by the user specified image 137
`producing the output 194. The input image 127 is unmodified by the
`system and output as representation 196 in the output video 190.”
`(Id.)
`Hence, Sitrick discloses a user input second image (face 137) is substituted for the
`
`first image (123) into the original video data stream (120) to create an edited
`
`displayable video (190).
`
`III. CLAIM CONSTRUCTION
`A.
`“digital extraction”
`The parties do not dispute Petitioner’s construction of “digital extraction”
`
`(and like terms). (POR at 6.) That construction is: “to digitally select and separate
`
`out, such as by copying.”
`
`B. Other constructions
`Patent Owner construes five other terms: “user input video data stream,”
`
`“original video data stream,” “spatially matching,” “pixel from the user entering
`
`data in the data entry display device,” and “at the digital processing unit is further
`
`capable of extracting the at least one pixel from the user pointing to a spatial
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`location in a displayed video frame”. (POR at 7-9.) Petitioner notes that Patent
`4
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`Owner proposes the same constructions that were adopted by the District Court in
`
`Petitioner’s Reply
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`
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`the related litigation. (Ex. 1018 at 8, 10.) Petitioner further notes that Patent
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`Owner’s constructions are not correct under the Phillips standard applicable in
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`District Court litigation and that the specification lacks adequate written
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`description support for the proposed constructions.1 However, as there are no
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`issues as to these constructions that the Board needs to resolve, and in the interest
`
`of administrative efficiency, Petitioner does not dispute them for the purposes of
`
`this proceeding.
`
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`1 For example, in order to give meaning to the “video” limitation in the “video data
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`stream” terms, the correct construction and plain meaning of these terms requires
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`that an illusion of movement be created or be capable of being created when the
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`relevant data is played or displayed. However, as explained below, Sitrick meets
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`the “video data stream” limitations under Petitioner’s view of their scope and
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`meaning, and, thus, the Board need not resolve whether Patent Owner’s broader
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`construction of these terms (which omits reference to an illusion of movement) is
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`supportable under the broadest reasonable construction standard applicable to this
`
`proceeding.
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`5
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`IV. ARGUMENT
`A.
`The Board should give little or no weight to Dr. Prieto’s
`Declaration
`
`Petitioner’s Reply
`
`The POR addresses claim 11 in a section entitled “Overview of Sitrick” and
`
`nine subsections. (POR at 29.) As Petitioner explains in detail below, Patent
`
`Owner’s arguments mischaracterize Sitrick. Patent Owner’s arguments also rely
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`almost entirely on the testimony of Dr. Prieto, the sole inventor of and owner of the
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`’591 patent. The testimony set forth in the Prieto Declaration (Ex. 2011) consists
`
`of a similar brief overview section of Sitrick and the same argument subsections
`
`from the POR. Indeed, the POR and Dr. Prieto’s Declaration are essentially
`
`identical relative to all material statements/arguments. For this reason alone, the
`
`Board should give little or no weight to Dr. Prieto’s Declaration. LG Display Co.
`
`Ltd. v. Innovative Display Techs. LLC, IPR2015-00487, Paper 36 (July 15, 2016)
`
`at 21; see also 37 C.F.R. § 42.65(a). Copied-and-pasted expert declarations are
`
`routinely disregarded by the Board. See, e.g., Silver Star Capital, IPR2016-00736,
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`Paper 11 at 14 (according little weight to parroted declaration); Cardiocom, LLC v.
`
`Robert Bosch Healthcare Sys., Inc., IPR2013-00439, Paper 26 (Jan. 16, 2014) at
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`15-16 (giving “little to no credit” to expert’s conclusory declaration).
`
`The Board should also give Dr. Prieto’s Declaration little or no weight
`
`because they are statements by an inventor/owner. Patent Owner is Prisua
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`
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`Patent No. 8,650,591
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`Engineering Corp., which was formed by Dr. Prieto in 2014 to commercialize the
`
`Petitioner’s Reply
`
`
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`’591 patent. (Ex. 2011-Prieto at ¶5.) Dr. Prieto is the sole inventor named on the
`
`’591 patent, and Patent Owner’s sole owner. (Id.; Ex. 1019 at 8.) Significantly,
`
`Dr. Prieto’s opinions are not corroborated by documentary evidence. Furthermore,
`
`as shown below, Dr. Prieto’s testimony is not credible. In re Garner, 508 F.3d
`
`1376, 1380 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
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`1368 (Fed. Cir. 2004). For these additional reasons, the Board should give Dr.
`
`Prieto’s Declaration little or no weight. EmeraChem Holdings, LLC v. Volkswagen
`
`Group of Am., Inc., 859 F.3d 1342, 1347 (Fed. Cir. 2017); Mahurkar v. C.R. Bard,
`
`Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`
`B. Dr. Prieto’s testimony is not credible
`As mentioned above, Dr. Prieto’s testimony is not credible. This is shown
`
`by the many examples provided below.
`
`
`1.
`
`Dr. Prieto’s testimony that Sitrick’s general purpose
`computers are “mainframes”
`
`Sitrick discloses that general purpose computers, such as Apple and IBM
`
`PCs, may be used to implement its technology. (Ex. 1007 at ¶¶41-42.) Dr.
`
`Prieto’s Declaration takes the position that the “general purpose computers” of
`
`Sitrick are mainframes that would not necessarily have a keyboard attached. (Ex.
`
`2011 at ¶¶55-58.) But during cross-examination, Dr. Prieto admitted that Sitrick
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`discloses a PC with a data entry device. (Ex. 1020-Prieto at 101:4-23.) Dr. Prieto
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`Petitioner’s Reply
`
`
`
`also admitted that it was known prior to 2010 that PCs would be coupled to data
`
`entry devices (e.g., keyboards) and displays. (Id. at 15:10-12, 62:10-16; 14:13-
`
`15:20; 16:1-16; 16:20-17:17; 96:5-15.) Thus, contrary to Dr. Prieto’s Declaration,
`
`Patent Owner concedes, as it must, that Sitrick’s disclosure of a general purpose
`
`computer discloses conventional data entry devices for PCs, including a keyboard.
`
`Dr. Prieto also testified that it was not obvious to use Sitrick’s PCs for
`
`graphics editing. (Id. at 96:5-19.) But Dr. Prieto’s testimony directly contradicts
`
`the express discloses of Sitrick, which discloses that PCs can complete the graphics
`
`editing processes described therein. (Ex. 1007-Sitrick at ¶¶41-43, 46, 69-70, 79-
`
`80, 95, 115, 118-22.) Hence, Dr. Prieto’s testimony on this point is not credible.
`
`Dr. Prieto also appears to be applying an improper disclosure standard by
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`contending that Sitrick does not disclose or teach something to a POSITA unless
`
`Sitrick requires it to the exclusion of other options. (Ex. 1020-Prieto at 99:2-15.
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`99:25-100:22, 101:24-104:2.) A prior art reference is considered for all that it
`
`discloses, not whether it exclusively requires something. In re Heck, 699 F.2d
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`1331, 1332-33 (Fed. Cir. 1983).
`
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`8
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
`
`
`2.
`
`Dr. Prieto’s testimony that claim 11 requires unclaimed
`elements
`
`Dr. Prieto also appears to conflate what she believes she invented with what
`
`the patent claims actually require, including with respect to functions that the
`
`digital processing unit of claim 11 must be able to perform. (Id. 1020-Prieto at
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`25:5-25 (explaining that it is necessary for the digital processing unit of Claim 11
`
`to perform RF and lightwave transmission); see also Ex. 2011 at ¶63.) RF and
`
`lightwave capabilities are certainly not requirements of claim 11, and thus of no
`
`moment for this proceeding.
`
`
`3.
`
`Dr. Prieto’s conflicting testimony about a POSITA’s
`knowledge of processor capabilities
`
`Dr. Prieto testified that a POSITA would not know how to perform the
`
`identifying, extracting, and selecting steps of claim 11 because they were not
`
`known prior to the filing date of her patent application. (Ex. 1020-Prieto at 32:19-
`
`24; 33:8-12; 34:15-22.) However, when asked during cross-examination where the
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`’591 patent teaches a POSITA how to perform these same steps, Dr. Prieto
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`responded that a POSITA would know how to do so based on a DPU’s ability to
`
`perform background analysis steps and that “one skilled in the art will know.” (Id.
`
`at 35:4-37:7.) Dr. Prieto also admits that DPU’s were already known in the prior
`
`art, already able to perform background analysis, and already able to select and
`
`copy video data streams, select a portion of a video as an image, and perform
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`Patent No. 8,650,591
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`spatial matching. (Id. at 37:8-39:5.) Thus, Dr. Prieto’s testimony on this point is
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`Petitioner’s Reply
`
`
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`contradictory and also not credible.
`
`Dr. Prieto’s testimony regarding user-selected images
`
`
`4.
`Dr. Prieto’s testimony is also not credible because she ignores express
`
`disclosures in the prior art that are harmful to Patent Owner. For example, Sitrick
`
`expressly describes FIG. 1 as “a system block diagram of the present invention.”
`
`(Ex. 1007-Sitrick at ¶31.) Sitrick also expressly provides that reference numeral
`
`137 is a “user specified image 137.” (Id.) Even though Dr. Prieto was given
`
`opportunities to admit Sitrick expressly discloses such features, Dr. Prieto
`
`maintained during cross-examination that Sitrick contained no such disclosures.
`
`(Ex. 1020-Prieto at 47:1-22, 55:25-56:19.) This also shows that Dr. Prieto’s
`
`testimony is not credible.
`
`C.
`
`Petitioner’s responses to the POR
`
`1.
`
`The “Overview” sections mischaracterize the evidence and
`Petitioner’s arguments
`
`The Overview sections of the POR appears to address Petitioner’s Overview
`
`of Sitrick on pp. 46-48 of the Petition. (POR at 14-15.) There are three main
`
`issues raised in these Overview sections. The first issue is whether the Petition
`
`equates terms of Sitrick with terms in the ’591 patent, e.g., equating “predefined
`
`audiovisual presentation” in Sitrick with the ’591 patent’s “original video data
`
`stream.” (POR at 14.) The POR suggests that there is no basis for equating these
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`elements, but these arguments make little sense in the context of Petitioner’s
`
`Petitioner’s Reply
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`
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`Overview section. Petitioner was merely identifying which elements of Sitrick
`
`map to the corresponding elements in claim 11 as part of a high level overview of
`
`the reference, which is then explained in detail in the limitation-by-limitation
`
`sections that follow the overview.
`
`The second issue is whether Petitioner failed to discuss an alleged “key”
`
`point of FIG. 1 regarding subsystem 100. (POR at 15.) As shown below, Patent
`
`Owner ignores Sitrick’s disclosures and the arguments raised in the Petition in
`
`order to focus on extraneous examples in the reference. This appears to be an
`
`attempt to confuse or distract by raising arguments that are not responsive to the
`
`arguments set forth in the Petition.
`
`The third issue is whether Sitrick allegedly fails to disclose “captured”
`
`images, or any “device” other than a “computer device.” (POR at 15.) Patent
`
`Owner’s assertions again miss the mark. Sitrick discloses numerous ways of
`
`capturing images, including taking pictures with a digital camera and digitizing
`
`videos/pictures from video cameras, photographs, or documents. (Ex. 1017-Delp
`
`at ¶¶3-14.) Sitrick also discloses numerous capable devices, including, inter alia,
`
`“general purpose computers,” “standard commodity personal computers” (such as
`
`those offered at the time by “Apple, IBM, etc.”), digital cameras, and devices for
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`“data entry” that include conventional PCs. (Ex. 1007-Sitrick at ¶¶42, 139.)
`11
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
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`
`2.
`
`Sitrick discloses “extracting the first image from the
`original video data stream”
`
`Patent Owner argues that Sitrick does not disclose limitation 11d-v, which
`
`corresponds to limitation 1e-v. (POR at 15-16; Petition at 33 (mapping); 63
`
`(analysis of 1e-v, identifying further explanation in 1-PREAMBLE-ii); 49-53
`
`(explaining extraction process in 1-Preamble-ii)). The Petition shows that Sitrick
`
`discloses this limitation by disclosing that a first image is extracted (1) when a
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`“mask” is produced and (2) when an image of a “reference object” is created.
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`(Petition at 49-53, 63.)
`
`The basis for Patent Owner’s argument is that the “analysis performed by
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`the tracking subsystem 700 (and 800) depicted in Figs 7 and 8, to determine if a
`
`selected reference object appears in the visual picture image 710, does not output
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`an image (first image).” (POR at 16; Ex. 1007-Sitrick at ¶49.) Patent Owner
`
`provides no support for this contention, nor for its description of “the purpose of
`
`using image recognition means” in Sitrick. (Id.) Patent Owner characterizes “the
`
`purpose of using image recognition means” with reference to ¶71 of Sitrick, which
`
`states:
`
`“The reference object may be embedded within the visual picture. In
`an embodiment where the reference object is embedded within the
`visual picture, the present invention includes means to analyze the
`visual picture to detect the embedded reference object. This may be
`
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`Case No. IPR2017-01188
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`Petitioner’s Reply
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`accomplished by image recognition means.” (Ex. 1007-Sitrick at
`¶71.)
`
`As shown, ¶71 refers to what “may” occur, to a non-limiting “embodiment,” and to
`
`an analysis means that is included with “the present invention,” not to a limiting
`
`function or “purpose of using image recognition means.” Thus, Patent Owner
`
`mischaracterizes Sitrick as setting forth a limiting purpose.
`
`Patent Owner also raises an argument relating to the “analysis performed by
`
`the tracking subsystem,” and contends that the output of that analysis is not an
`
`image. (POR at 16.) However, Patent Owner’s conclusory statement is at best
`
`tangential to the argument raised in the Petition, which is that a “mask or reference
`
`object image” is extracted. (Petition at 63.)2 What is relevant to the dispute
`
`between the parties is whether Sitrick discloses extracting a first image, not
`
`whether some outputs are not images. (See Ex. 1017-Delp at ¶¶15-17.) Patent
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`Owner’s analysis is also lacking because it does address ¶¶54, 57, 72, 82, and 112-
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`14 of Sitrick, which are identified in the Petition as disclosing, inter alia, Sitrick’s
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`extraction of mask and reference object images. (Petition at 49-53; 63.)
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`2 As shown in the Petition in §VII.A.2 and on p. 66, limitations of claim 11
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`correspond to limitations of claims 1 and 2.
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`Petitioner’s Reply
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`3.
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`Sitrick discloses “extracting the identified at least one pixel
`as the second image”
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`Patent Owner argues that Sitrick does not disclose limitation 11d-ii, which
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`corresponds to limitation 1e-ii. (POR at 16-18; Petition at 33 (mapping); 60-61
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`(analysis of 1e-v, identifying further explanation in 1c-ii and 1e-i).)
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`As explained in the Petition, Sitrick discloses “an extracted user selected
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`image” – specifically, facial image 137. (Petition at 60.) FIG. 1 includes this
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`image of a face:
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`Petitioner further identified FIG. 1, ¶¶31, and 101 in support of its argument that
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`image 137 is the extracted “second image,” which discloses the claim limitation.
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`(Id.) Sitrick specifically discloses extracting “a user selected image,” which is
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`“selectively integrated into a predefined audiovisual presentation in place of a
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`tracked portion of the predefined audiovisual presentation.” (Ex. 1007-Sitrick at
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`¶11; see also ¶¶12-13 (explaining that the user selected image may be “provided
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`by,” i.e., extracted from, any one of a number means including video cameras,
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`Petitioner’s Reply
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`photographs, and documents); 31 (noting that “user specified image 137” replaces
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`“representation 123.”)) In other words, an image selected by a user in an input
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`video stream [limitation 11d-i] is extracted (e.g., selected and copied, see §III.A) as
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`“the second image” and used to replace a first image in an original video stream.
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`(Id.) A POSITA would understand this because the input of digital input
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`information includes the digital extraction (selection and copying) of the user input
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`content 130, including image 137, as shown in FIG. 1:
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`(Ex. 1017-Delp at ¶¶18-20.) Likewise, FIGS. 5-6 and the corresponding
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`descriptions in Sitrick disclose extracting a second image, including extracting
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`images from an “external source of user image content 570” and the extracted
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`“user images” 671-77 that are stored in database 670. (Ex. 1017-Delp at ¶21-28.)
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`Annotated versions of the figures illustrated these disclosures below:
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`Petitioner’s Reply
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`(Ex. 1017-Delp at ¶¶22-23.) Thus, Sitrick discloses the requirements of limitation
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`11d-ii.
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`Petitioner’s Reply
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`The POR does not address these disclosures, but, instead delves into
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`explanations of other paragraphs and figures in Sitrick. (POR at 16-18.) Patent
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`Owner never explains why one must do so, and goes on to assert that paragraphs in
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`Sitrick disclose image data of “various formats.” (Id.) Patent Owner ultimately
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`concludes that “none of these formats disclosed by Sitrick teach the digital
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`extraction of the second image, nor can they be equated to ‘the second image.’”
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`(Id. at 18.) Patent Owner does not explain this conclusory statement, support it
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`with evidence, or explain its relevance to Petitioner’s argument, which points to
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`different figures and paragraphs in Sitrick as disclosing this limitation.
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`4.
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`Sitrick discloses “using a data entry device operably
`coupled with the digital video capture device and a digital
`display device”
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`Patent Owner argues that Sitrick does not disclose limitation 1c-i, which
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`Petitioner assumes was meant to refer to the slightly different language of
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`limitation 11b. (POR at 18-20; Petition at 32 (mapping); 56-58 (analysis of 1c-i).)
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`Petitioner showed that Sitrick discloses, teaches, or suggests this limitation by
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`disclosing that Sitrick’s invention may be implemented on a general purpose
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`computer, which would be connected with a data entry device, display device, and
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`image capture device (e.g., a keyboard, monitor, and video camera, respectively).
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`(Petition at 56-58.)
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`Petitioner’s Reply
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`Patent Owner responds that Sitrick’s general purpose computers are
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`mainframes. (POR at 18.) As explained previously, this contention ignores that
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`general purpose computers include “standard commodity personal computer[s]
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`available from the usual vendors (Apple, IBM, etc.),” which would normally have
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`a keyboard. (Ex. 1007-Sitrick at ¶¶42.) Further, as explained in §IV.A.1, Dr.
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`Prieto admitted that Sitrick discloses using a PC with a data entry device, and that
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`it was known prior to 2010 that PCs would be coupled to data entry devices (e.g.,
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`keyboards) and displays. Thus, Patent Owner is incorrect.
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`Patent Owner also contends
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`that “special purpose hardware and
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`hardware/software combinations” may not be coupled with a data entry device.
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`(POR at 18-20.) There appears to be no relevance to this argument, because
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`“special purpose” hardware has no bearing on “general purpose” computers.
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`Finally, Patent Owner references a touchscreen. (Id. at 20.) This argument
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`is not relevant, because claim 11 does not require a touchscreen.
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`5.
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`Sitrick discloses “selecting the at least one pixel in a frame
`of the user input video stream”
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`Patent Owner argues that Sitrick does not disclose limitation 11b, which
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`corresponds to limitation 1c-ii. (POR at 20-21; Petition at 32 (mapping); 58-59
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`(also identifying limitation 1c-i).) The Petition shows that Sitrick discloses this
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`limitation because a user selects at least one pixel (e.g., selects an entire image)
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`from an input video data stream to use as the “second image.” (Petition at 58-59.)
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`Petitioner’s Reply
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`For instance, Sitrick discloses:
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`“[A] user selected image is selectively integrated into a predefined
`audiovisual presentation in place of a tracked portion of the
`predefined audiovisual presentation.” (Petition at 58 (citing Ex. 1007-
`Sitrick at ¶11) (emphasis added).)
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`Sitrick further discloses:
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`“The user image can be provided by any one of a number of means,
`such as by…digitization scan of an external object such as of a person
`by video camera or a photograph or document (by a Scanner, etc.).”
`(Petition at 57 (citing Ex. 1007-Sitrick at ¶12) (emphasis added).)
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`Thus, Sitrick discloses the “selecting the at least one pixel” limitation of the claim.
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`Patent Owner contends
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`that Petitioner’s argument
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`is a “complete
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`misunderstanding of the Sitrick invention” and that “selection of at least one pixel”
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`is not required when selecting a “user selected image.” (POR at 20-21.) It appears
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`Patent Owner may be arguing that Sitrick discloses other embodiments that do not
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`necessarily disclose “selecting the at least one pixel in a frame of the user input
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`video stream.” Such arguments are not relevant as embodiments of Sitrick clearly
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`disclose the selecting step of limitation 11b.
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`Petitioner’s Reply
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`6.
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`Sitrick discloses “using a digital processing unit operably
`coupled with the data entry device performing”
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`Patent Owner argues that Sitrick does not disclose limitation 11d, which
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`corresponds to limitation 1e. (POR at 21-23; Petition at 32 (mapping); 59.) As
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`explained in the Petition, “digital processing unit” (DPU) is not defined in the ’591
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`patent, it has no special meaning, and, therefore, any computer capable of
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`performing the DPU’s function meets the requirements of the claims. (Petition at
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`23.) As it relates to Sitrick, Petitioner showed that Sitrick’s computers carry out
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`the functions disclosed in the reference. (Petition at 59-64.) Patent Owner
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`attempts to narrowly construe the phrase “digital processing unit” by suggesting
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`that a “digital processing unit” could also be capable of performing functions that
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`Sitrick does not describe. (Id.) Patent Owner also does not propose a construction
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`for DPU.
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`Patent Owner’s arguments lack clarity and evidentiary support. For
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`instance, the POR defines “CPU” based on a book that is not in evidence. (POR at
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`21-22.) Patent Owner goes on to suggest that a CPU may be considered “a subset”
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`of a DPU. (Id. at 22.) This contention is not supported by evidence, and appears
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`to be an admission that a CPU (a species) discloses a DPU (a genus). In re Slayter,
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`276 F.2d 408, 411 (CCPA 1960).
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`Petitioner’s Reply
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`Patent Owner also contends that Sitrick’s CPU is not a DPU because DP