UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Samsung Electronics America, Inc.,
`Petitioner,
`
`v.
`
`Prisua Engineering Corp.,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-01188
`Patent No. 8,650,591 to Prieto
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
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`
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Samsung Electronics America, Inc.,
`Petitioner,
`
`v.
`
`Prisua Engineering Corp.,
`Patent Owner.
`
`
`
`
`Case No. IPR2017-01188
`Patent No. 8,650,591 to Prieto
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`
`
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`Petitioner’s Supplemental Reply
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`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS .......................................................................................... iii
`THE BOARD IS EMPOWERED TO MAKE ALL APPLICABLE
`I.
`PATENTABILITY DECISIONS ................................................................... 1
`Even though claims are IPXL-indefinite, the Board can still
`A.
`assess §§102-103 invalidity ................................................................. 1
`SAS and §318 empowers the Board to address §112 invalidity
`in the final written decision .................................................................. 2
`Prisua was presented with and waived a chance to address
`patentability .......................................................................................... 4
`PRISUA’S ARGUMENTS FAIL TO OVERCOME PETITIONER’S
`EVIDENCE OF INVALIDITY ...................................................................... 5
`SENFTNER ANTICIPATES CLAIMS 1, 2, 8, AND 11 .................... 5
`A.
`1.
`Limitations 1P-i, ii, and 1a: Prisua’s “apparatus”
`
`arguments ................................................................................... 5
`Limitation 1b: Senftner discloses an image display device
`that displays the original video stream ...................................... 6
`Prisua’s remaining arguments regarding Senftner are
`irrelevant, unexplained, and lack evidentiary support ............... 7
`SITRICK RENDERS OBVIOUS CLAIMS 1, 2, AND 8 ................. 11
`SENFTNER AND SITRICK IN VIEW OF LEVOY RENDER
`OBVIOUS CLAIMS 3 AND 4 .......................................................... 14
`
`
`B.
`
`C.
`
`II.
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`2.
`
`
`3.
`
`
`B.
`C.
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`
`
`ii
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Supplemental 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
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`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.
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`iii
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`Case No. IPR2017-01188
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`Petitioner’s Supplemental Reply
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`Exhibit
`1015
`
`Description
`MPEG | The Moving Picture Experts Group website, (see
`http://mpeg.chiariglione.org/)
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`Affidavit of Ronald J. Pabis in Support of Motion for Pro Hac
`Vice Admission
`
`Supplemental 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)
`
`Transcript of May 15, 2018 Conference Call
`
`Affidavit of Stephen M. Ullmer in Support of Motion for Pro
`Hac Vice Admission
`
`Declaration of Edward J. Delp, Ph.D. in Support of
`Petitioner’s Supplemental Reply
`
`Day 1 Trial Transcript, Prisua Eng’g Corp. v. Samsung Elec.
`Co., Ltd., No. 1:16-cv-21761-KMM (S.D. Fla.)
`
`Day 2 Trial Transcript, Prisua Eng’g Corp. v. Samsung Elec.
`Co., Ltd., No. 1:16-cv-21761-KMM (S.D. Fla.)
`
`Deposition Transcript of Dr. Yolanda Prieto, dated July 18,
`2018
`
`iv
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Supplemental Reply
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`Exhibit
`1029
`
`Description
`Email chain between H. Briggs and J. Carey re: “IPR2017-
`01188 – Expert Deposition Scheduling,” last email dated
`7/9/2018
`
`1030
`
`1031
`
`
`
`Email from H. Briggs to Prisua Counsel re: “Request for
`Clarification on Decision Denying Request for Rehearing –
`IPR2017-01188,” dated 7/10/2018
`
`Email chain between H. Briggs and J. Carey re: “IPR2017-
`01188 – Expert Deposition Scheduling,” last email dated
`7/7/2018
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`v
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`Case No. IPR2017-01188
`Patent No. 8,650,591
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`Petitioner’s Reply
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`I.
`
`THE BOARD IS EMPOWERED TO MAKE ALL APPLICABLE
`PATENTABILITY DECISIONS
`A.
`
`Even though claims are IPXL-indefinite, the Board can still assess
`§§102-103 invalidity
`
`The Institution Decision (“Decision”) correctly found claims 1-4 and 8 to be
`
`IPXL-indefinite. (Decision at 11-14.) Patent Owner (“Prisua”) argues in its
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`Corrected Supplemental Response (Paper 50, “SPOR”) that such claims should,
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`thus, escape invalidity under §§102-103. (SPOR at 4-5.) However, as Vibrant
`
`Media, Inc. v. General Electric Co. makes clear, the Board may assess prior art
`
`invalidity, notwithstanding IPXL indefiniteness. IPR2013-00172, Paper 50 at 9-11
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`(PTAB July 28, 2014), aff’d Case No. 15-1136 (Fed. Cir. Dec. 17, 2015). This is
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`because the uncertainty in claim scope involves only two potential species
`
`(apparatus claim elements or method steps), both of which can be measured against
`
`the prior art. See id. at 11 (“We interpret claims 9–11, for the purposes of this
`
`decision, as requiring both the recited apparatus claim elements and the recited
`
`method steps.”) (citing In re Collier, 397 F.2d 1003, 1005-06 (CCPA 1968)).
`
`Thus, while IPXL
`
`indefiniteness may
`
`impair
`
`the ability
`
`to demonstrate
`
`infringement, it does not hinder the Board’s ability to address patentability. Id. at
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`9-10.
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`1
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`Petitioner’s Supplemental Reply
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`Specifically, whether viewed as apparatus limitations or method steps,
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`claims 1-2 generally comprise the same limitations as instituted claim 11 (Petition
`
`at 31-34), so the Board can readily decide the invalidity of claims 1-2. Claims 3-4
`
`and 8 do not alter this analysis, and those claims should likewise be found invalid
`
`under §§102-103.
`
`B.
`
`SAS and §318 empowers the Board to address §112 invalidity in
`the final written decision
`
`Prisua also incorrectly contends that the Board must remain silent about the
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`validity of the claims under §112. (SPOR at 4-5, 34.) As per SAS:
`
`“When the Patent Office initiates an inter partes review … the Patent
`Office must ‘issue a final written decision with respect to the
`patentability of any patent claim challenged by the petitioner.’ 35
`U.S.C. §318(a) (emphasis added). In this context… ‘any’ means
`‘every.’ The agency cannot curate the claims at issue but must decide
`them all.”
`
`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018). The directive of 318(a)
`
`is “mandatory and comprehensive,” and “imposes a nondiscretionary duty.” Id. at
`
`1354.
`
`Here, because IPXL-indefiniteness is at issue in this IPR, the Board is
`
`required to address it in its final written decision, at least insofar as needed to
`
`addresses and resolve Petitioner’s prior art challenges. Moreover, in view of SAS,
`
`Petitioner further notes that §318(a) necessitates a final determination as to all
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`2
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`“patentability” issues in the IPR, and, §318(b) requires “canceling” claims found
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`Petitioner’s Supplemental Reply
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`
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`unpatentable—as these claims are under both §§102-103 and §112.
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`Further, while none of the claims use the word “means,” and the parties
`
`agree that none of the claims invoke §112(6), should the Board disagree, the proper
`
`result under SAS is for the Board to address §112(6) in its final written decision
`
`and cancel the claims. This is because there is no corresponding structure for the
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`“digital processing unit,” no discussion of a DPU, and no disclosure of algorithms
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`for the steps DPUs perform.1 Dr. Prieto (Prisua’s owner, expert, and the only
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`named inventor on the ’591 patent) has testified that the DPU “is a general term
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`used to a mean a device (unit) in which digital processing functions are performed)
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`and can take “various forms” including “an application’s processor,” a “central
`
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`1 “Digital processing unit” is presumed not to invoke means-plus-function analysis
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`and it is sufficiently structural under the broadest reasonable interpretation to avoid
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`such treatment under Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed.
`
`Cir. 2015) (en banc). Unlike, e.g., Ex Parte Erol, Appeal No. 2011-001143 at 3,
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`where the indefinite limitation involved a processer adapted to “perform an action
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`in response to” something else, the claimed DPU in this case performs steps that
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`are defined within the claims.
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`3
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`processing unit,” or “a digital signal processor.” (Ex. 2014-Prieto at ¶159; Ex.
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`Petitioner’s Supplemental Reply
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`
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`1026-Trial_V1 at 148:10-20.) Dr. Prieto has also admitted that a POSITA would
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`need algorithms to perform these steps and no such algorithms are disclosed in the
`
`specification. (E.g., Ex. 1028-Prieto_Tr. at 22:16-25:5; 55:5-56:18; 58:11-60:2;
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`64:5-67:15; 70:2-71:17.)
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`C.
`
`Prisua was presented with and waived a chance to address
`patentability
`
`Prisua states without explanation that it “does not agree with the Board’s
`
`stated inability to determine the scope of claims 1-4 and 6.”2 (SPOR at 34.)
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`Prisua’s request for rehearing also argues the allotted word count is insufficient.
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`(Paper 39 at 3, 7). Petitioner offered Prisua additional words and time to explain
`
`its §112 arguments, and Petitioner offered to file a joint request with the Board
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`permitting both. (See, e.g., Exs. 1029-1031.) Prisua never accepted or even
`
`directly responded to Petitioner’s offer.
`
`By failing to avail itself of this opportunity, Prisua effectively admits it
`
`cannot rebut the Board’s §112 findings. See Rovalma, SA v. Bohler-Edelstahl
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`BmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (permitting the Board to
`
`
`2 Petitioner assumes that the reference to claim 6 is a typographical error and meant
`
`to reference claim 8.
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`4
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`draw its own inferences and conclusions and use a party’s own submissions).
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`Petitioner’s Supplemental Reply
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`
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`Instead of rebutting the Board’s findings, Prisua has repeatedly asked the Board to
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`dismiss this IPR because of the Board’s IPXL findings. (See, e.g., SPOR at 4-5;
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`Paper 39 at 3-6.)3 But by failing to respond substantively, Prisua waived any such
`
`argument. (Paper 38 at 6 & n.4 (inviting Prisua to respond if it disagrees and
`
`noting any arguments not made are waived).)
`
`II.
`
`PRISUA’S ARGUMENTS FAIL TO OVERCOME PETITIONER’S
`EVIDENCE OF INVALIDITY
`A.
`
`SENFTNER ANTICIPATES CLAIMS 1, 2, 8, AND 11
`
`1.
`
`Limitations 1P-i, ii, and 1a: Prisua’s “apparatus”
`arguments
`
`Prisua argues that Senftner does not anticipate because it does not literally
`
`refer to its multi-element system as an “apparatus.” (SPOR at 5-8.) Prisua is
`
`wrong on the law and the facts.
`
`Prisua appears to suggest that “apparatus” claims are limited to single
`
`unitary devices. (E.g., Ex. 1028-Prieto_Tr. at 81:17-84:4.) This proposition has no
`
`support in the law, and Prisua cites none. See, e.g., In re Walter, 618 F.2d 758,
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`768 (CCPA 1980) (rejecting patentee’s position that apparatus claims were limited
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`3 Patent Owner also could have amended its claims to cure its IPXL problem.
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`Vibrant, IPR2013-00172, Paper 50 at 8.
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`5
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`Patent No. 8,650,591
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`to a “unitary device” even where the patent disclosed such a unitary device as a
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`Petitioner’s Supplemental Reply
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`
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`preferred “best mode”), abrogated on other grounds, In re Bilski, 545 F.3d 943
`
`(Fed. Cir. 2008). Prisua’s argument also has no factual support, given that claim 1
`
`recites multiple devices and can include at least an “external memory device.”
`
`(Id.; Ex. 1001 at claim 1.)
`
`The SPOR also appears to suggest that anticipation is an ipsissimis verbis
`
`test, which it is not. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990); MPEP §2131.
`
`Nonetheless, Senftner discloses “[p]rocesses and apparatus for personalizing
`
`video” and its “Description of Apparatus” section shows that the apparatus may,
`
`but need not, be divided among multiple physical units and modules. (Ex. 1006-
`
`Senftner at 20:22-21:53.)
`
`
`2.
`
`Limitation 1b: Senftner discloses an image display device
`that displays the original video stream
`
`Prisua next argues Senftner never displays original video. (SPOR at 8-10.)
`
`It is not disputed that Senftner displays video. (Petition at 19-20; Ex. 1006-
`
`Senftner at 21:6-8; FIG. 10.) The monitor depicted in FIG. 10 has video display
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`capabilities, which is all that Dr. Prieto contends is required by the claims. (Ex.
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`2014-Prieto at ¶42 (“an image display device configured with the capability of
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`displaying the requisite video stream”); see also Ex. 1025-Delp at ¶¶6-10.)
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`6
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`Petitioner’s Supplemental Reply
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`Prisua’s characterization of Senftner fails. For example, selecting targets in
`
`an original video involves viewing the original video to select the appropriate
`
`target. (Ex. 1006-Senftner at 2:33-54, 5:14-40, 6:1-20; Ex. 1025-Delp at ¶¶9-10.)
`
`Senftner also discloses a full range of personalization capabilities, including
`
`replacing a single actor with a personalization. (Ex. 1006-Senftner at 6:1-20; Ex.
`
`1025-Delp at ¶¶9-10.) In doing so, the original video stream is displayed whenever
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`the replaced actor is not present in a corresponding portion of the stream, e.g., in
`
`film scenes that do not include a replaced actor. (Ex. 1025-Delp at ¶10.)
`
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`3.
`
`Prisua’s remaining arguments regarding Senftner are
`irrelevant, unexplained, and lack evidentiary support
`
`Prisua’s arguments in the SPOR are generally presented without explanation
`
`or supporting evidence. In many instances, Prisua improperly cites Dr. Prieto’s
`
`declaration for entire arguments. Such incorporation by reference of arguments
`
`cannot be considered if the arguments are not presented in the SPOR. §42.6(a)(3);
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB
`
`Aug. 29, 2014) (marked informative) (refusing to consider arguments incorporated
`
`from an expert declaration).
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`7
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`Patent No. 8,650,591
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`a. Limitation 1c-i
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`
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`Petitioner’s Supplemental Reply
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`Senftner discloses data entry devices (“DEDs”), including a keyboard,
`
`mouse, and other means. (Ex. 1006-Senftner at 20:62-64; FIG. 10.) Prisua’s
`
`argument to the contrary is not correct.
`
`Somewhat incredibly, Dr. Prieto testified at her deposition that DEDs were
`
`not known at the time of filing her patent. (Ex. 1028-Prieto at 26:19-22.) Dr.
`
`Prieto also appears to argue in her declaration (without evidentiary support) that
`
`limitation 1c-i is not met because the functions performed by the DED in Senftner
`
`are different than what she intended to claim. But such argument is irrelevant.
`
`“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-
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`Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). Prisua
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`also cites to numerous paragraphs of Dr. Prieto’s corrected declaration, apparently
`
`in an attempt to incorporate additional argument by reference, but none of these
`
`arguments, even if properly made, rebut or undermine Senftner’s disclosure of this
`
`limitation.
`
`b. Limitation 1c-ii
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`Again, the SPOR generally ignores Senftner’s disclosures (e.g., Ex. 1006-
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`Senftner at FIG. 10 shows a human “requester”). Prisua appears to argue (a) that
`
`some steps following a human request are performed by software, (b) that claim 1
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`is not as limited as Senftner because the ’591 patent only requires using selection
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`8
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`based on “at least one pixel” instead of many pixels, and (c) that Senftner operates
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`Petitioner’s Supplemental Reply
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`
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`on “data” instead of “pixels.” (SPOR at 11-13.) The Petition negates these
`
`arguments by showing how a user selects at least one pixel from a user input video
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`stream (e.g., selecting a pixel from a captured video, such as from image device
`
`660, see Ex. 1006-Senftner at 20:56-21:11). (Petition at 21-23.)
`
`For example, Prisua suggests that Senftner is different from the ’591 patent
`
`because Senftner discloses selecting more than one pixel. (Ex. 1028-Prieto_Tr. at
`
`25:10-18.) This argument belies the claim language, which requires selection of
`
`“at least one pixel.” (SPOR at 12.)
`
`Likewise, Prisua appears to dispute Sentfner’s “pixel” disclosures. (SPOR
`
`at 12.) But the argument in the SPOR contradicts Senftner’s express disclosure:
`
`“The process steps applied to the video involve altering or manipulating the actual
`
`data stored in the digital video on a pixel-by-pixel and frame-by-frame basis.” (Ex.
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`1006-Senftner at 8:52-54.)
`
`c. Limitation 1d
`
`Prisua argues only that Senftner does not teach a display as a DED. (SPOR
`
`at 13.) Given that limitation 1d covers multiple types of DEDs, this argument is
`
`irrelevant.
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`9
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`d. Limitations 1e to 1e-v & 1e-vii
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`
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`Petitioner’s Supplemental Reply
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`Prisua alleges disputes regarding these limitations without explanation.
`
`(SPOR at 13-15.) For example, for 1e, Prisua concludes without explanation that
`
`Senftner fails to disclose a DPU performing functions required by claim 1.
`
`However, Dr. Prieto admits that DPU is a general term, that DPUs are well-known
`
`to a POSITA, and that a DPU “can take the form of maybe just a central processing
`
`unit[.]” (Ex. 1028-Prieto_Tr. at 6:6-13:3; 15:7-9; 17:8-24; 18:17-21; 21:20-24; Ex.
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`1026-Trial_V1 at 148:10-20.) Limitation 1e-iii is left blank, while for 1e-i, ii, iv,
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`v, and vii, Prisua states a conclusion with no corresponding explanation. None of
`
`this rebuts or undermines Petitioner’s showing that Senfner discloses these
`
`limitations. (See Petition at 23-29.)
`
`e. Limitation 1e-vi & Claims 2, 11
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`Prisua appears to argue that the spatial matching performed in Senftner is
`
`not the claimed matching because encoded data is not in the spatial domain.
`
`(SPOR at 16-17.) But a POSITA would understand that pixels of images (whether
`
`encoded or not) are aligned in the spatial domain, as disclosed in Senftner. (Ex.
`
`1006-Senftner at 10:29-46, 12:27-45; Ex. 1025-Delp at ¶¶11-12.) Prisua does not
`
`explain why respective first and second images cannot be spatially matched (i.e.,
`
`have their pixels aligned in the spatial domain) if they are encoded.
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`10
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`Petitioner’s Supplemental Reply
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`Prisua also states that Senftner does not use motion vectors, but does not
`
`explain that position or rebut the Petition.
`
`f. Claim 8
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`Prisua again provides its conclusion without explanation. (SPOR at 17.)
`
`However, Senftner discloses replacing an original actor’s face with a new actor’s
`
`face. (Ex. 1006-Senftner at 9:6-9.)
`
`SITRICK RENDERS OBVIOUS CLAIMS 1, 2, AND 8
`
`B.
`Petitioner previously showed in the Petition that Sitrick renders obvious
`
`claims 1, 2, 8, and 11 (Petition at 46-66), and showed in its Reply how Prisua’s
`
`arguments regarding claim 11 are unavailing. (See also Petition at 31-34 (mapping
`
`claims 1-2 to claim 11.) Thus, Petitioner has already carried its burden in the
`
`Petition and Reply of showing that Sitrick renders obvious the disputed claims.
`
`a. Limitations 1P-i, ii, and 1a
`
`Prisua raises similar “apparatus” arguments discussed above with respect to
`
`Senftner. This argument fails for the same reasons explained above. (See also Ex.
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`1007-Sitrick at (54); Claims 1-10; Abstract; ¶¶3-4 (collectively showing that
`
`Sitrick claims a complete system, not merely subsystems).)
`
`b. Limitation 1b
`
`Prisua raises the same “original” video argument discussed above with
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`respect to Senftner. (SPOR at 20-22.) It again fails for similar reasons, including
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`because Sitrick discloses a display device that plays the original video as illustrated
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`Petitioner’s Supplemental Reply
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`in FIGS. 1-6. (Petition at 55; Ex. 1017-Delp at ¶¶12-14.) Prisua’s rebuttal
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`argument is contradicted by Dr. Prieto’s own testimony where she admits that FIG.
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`1 illustrates an original video data stream, a user input, and an edited video data
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`stream. (Ex. 1028-Prieto_Tr. at 96:4-11, 98:7-101:14; Ex. 1027-Trial_V2 at
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`44:11-46:12.)
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`c. Limitations 1c-i & ii
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`Prisua’s arguments here are the same as in its POR. (POR at 18-21; SPOR
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`at 22-24.) This argument fails for the same reasons presented in the Reply. (See
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`Reply at 17-18.)
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`d. Limitation 1e
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`Prisua argues that the claimed DPU is not the same as the CPU of Sitrick.
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`(SPOR at 24.) This argument fails for the same reasons explained in the Reply,
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`and because Dr. Prieto admits that the DPU may be a CPU. (See Reply at 9-10;
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`20-24; Ex. 1026-Trial_V1 at 148:10-20; Ex. 2014-Prieto at ¶159.)
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`e. Limitations 1e-i & ii
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`Prisua reiterates arguments raised in its POR relative to extracting a second
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`image. (SPOR at 25-27.) These arguments fail for the reasons previously
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`explained. (Reply at 10, 12-17, 22-23.)
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`f. Limitation 1e-iii
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`Petitioner’s Supplemental Reply
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`Prisua’s argument is that images are not stored. (SPOR at 28.) This
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`argument fails as explained in the Reply. (Reply at 14-16.)
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`g. Limitations 1e-iv and v
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`Prisua presents no argument. (SPOR at 28-29.)
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`h. Limitations 1e-vi & vii
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`Prisua argues that Sitrick does not disclose the spatially matching
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`limitations. (SPOR at 29-32.) Petitioner previously explained how Sitrick
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`discloses spatial matching. (Petition at 33, 63-64; Reply at 23-24; Ex. 1017-Delp
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`at ¶¶46-53.) Prisua’s new arguments appear to rely, largely, on conclusory
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`testimony from Dr. Prieto, including that Sitrick’s techniques for matching the
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`images as closely as possible “does not necessarily provide the required resulting
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`alignment.” (SPOR at 30.) These arguments fail as previously explained. (Reply
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`at 6-10; 23-24.) Prisua also attempts to distinguish an “overlay” process from the
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`claimed substitution, but this argument fails because one image is substituted for
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`the other in the video that is displayed. (SPOR at 31-32; see Petition at 64.)
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`i. Claim 2
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`Prisua admits that motion vectors are calculated but disputes that they are
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`applied to the second image. (SPOR at 32.) This argument fails for the reasons
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`explained in the Reply. (Reply at 25-26.)
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`j. Claim 8
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`Prisua presents no argument.
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`C.
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`SENFTNER AND SITRICK IN VIEW OF LEVOY RENDER
`OBVIOUS CLAIMS 3 AND 4
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`Prisua presents no rebuttal to Petitioner’s combination grounds. For Ground
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`3, Prisua presents two conclusory sentences. (SPOR at 33-34.) Indeed, Prisua’s
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`argument appears to be that Levoy does not disclose limitations 1e-i and 1e-ii, for
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`which Levoy is not relied upon. (Id.) Prisua does not contest Petitioner’s
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`combination rationale nor that Levoy discloses the matter added by claims 3 and 4.
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`For Ground 4, Prisua concludes without explanation that Levoy’s touch
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`screen could not handle the “huge data burden” of Sitrick. (SPOR at 33.) Prisua
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`never addresses Petitioner’s motivation to combine or whether Levoy discloses the
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`matter added by claims 3 and 4.
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`Thus, for both combination grounds, Prisua’s arguments must be rejected.
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`Date: July 23, 2018
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`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`
`By: /s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
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`Petitioner’s Supplemental Reply
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`Fax: (303) 572-6540
`Counsel for Petitioner
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`15
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`Petitioner’s Supplemental Reply
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of July, 2018, a copy of this Petitioner’s
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`Reply including all attachments and exhibits has been served in its entirety via
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`electronic mail by emailing Patent Owner’s lead and backup counsel at:
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`aunderwood@careyrodriguez.com
`tlandry@careyrodriguez.com
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`as provided for by Patent Owner’s Updated Mandatory Notices.
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`Respectfully submitted,
`GREENBERG TRAURIG, LLP
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`
`By: /s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
`Fax: (303) 572-6540
`Counsel for Petitioner
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`Date: July 23, 2018
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`Petitioner’s Supplemental Reply
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`CERTIFICATE OF COMPLIANCE
`WITH TYPE-VOLUME LIMITATION
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`Pursuant to 37 C.F.R. §§ 42.24 et seq., the undersigned certifies that this
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`Petitioner’s Supplemental Reply complies with the 2,800-word type-volume
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`limitation set forth by the Board in the May 30, 2018 Order (Paper 38). The
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`Petitioner’s Reply contains 2,769 words, excluding the parts of the Petitioner’s
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`Reply exempted.
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`
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`Date: July 23, 2018
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`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`
`By: /s/ Heath J. Briggs
`Heath J. Briggs
`Registration No. 54,919
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Phone: (303) 572-6500
`Fax: (303) 572-6540
`Counsel for Petitioner
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