UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner
`
`____________________
`
`Case No. IPR2017-01218
`U.S. Patent No. 8,983,134
`____________________
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`PAPER NO. 44
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`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner
`
`____________________
`
`Case No. IPR2017-01218
`U.S. Patent No. 8,983,134
`____________________
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`PAPER NO. 44
`
`
`
`
`
`
`
`Case No. IPR2017-01218
`U.S. Patent No. 8,983,134
`Petitioner’s Notice of Cross-Appeal
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 37 C.F.R. §§ 90.2(a), 90.3(a)(1) and Federal Rule of Appellate
`
`Procedure 4(a)(3), Petitioners Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (collectively, “Samsung”) hereby give notice of cross-
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`appeal to the United States Court of Appeals for the Federal Circuit from the
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`Patent Trial and Appeal Board’s (“Board”) Final Written Decision entered on
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`September 28, 2018 (Paper No. 40) and the Board’s Decision Denying Petitioner’s
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`Request for Rehearing entered on January 10, 2019 (Paper No. 42), and from all
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`underlying orders, decisions, rulings, and opinions. Patent Owner previously
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`noticed an appeal of the Final Written Decision on January 11, 2018 (Paper No.
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`43), and this notice of cross-appeal is timely.
`
`Pursuant to 37 C.F.R. § 90.2(a)(3)(ii), Samsung states that its cross-appeal
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`will address all aspects of the Board’s determination that Samsung did not
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`demonstrate that claims 4-6 of U.S. Patent No. 8,983,134 (the “’134 Patent”) are
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`unpatentable over the prior art, and any findings or determinations supporting or
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`relating to that determination, including, but not limited to, the Board’s
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`construction and application of the claim language, the Board’s interpretation of
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`-1-
`
`
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`Case No. IPR2017-01218
`U.S. Patent No. 8,983,134
`Petitioner’s Notice of Cross-Appeal
`the prior art, and the Board’s interpretation of expert evidence. Copies of the Final
`
`Written Decision (Paper No. 40) and the Decision Denying Petitioner’s Request
`
`for Rehearing (Paper No. 42) are attached hereto.
`
`Samsung is also filing a copy of this Notice of Cross-Appeal with the Patent
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`Trial and Appeals Board. A copy is also being filed electronically with the Clerk’s
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`Office for the United States Court of Appeals for the Federal Circuit, along with
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`the required docketing fee. A copy of this Notice is being served on Patent Owner
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`Image Processing Technologies, LLC.
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`-2-
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`
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`Case No. IPR2017-01218
`U.S. Patent No. 8,983,134
`Petitioner’s Notice of Cross-Appeal
`
`
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`Respectfully submitted,
`
`
`/s/ Marc Pensabene
`Marc Pensabene (Reg. No. 37,416)
`mpensabene@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
`
`Nicholas J. Whilt (Reg. No. 72,081)
`nwhilt@omm.com
`O’MELVENY & MYERS LLP
`400 S. Hope Street
`Los Angeles, CA 90071
`Telephone: 213-430-6000
`Facsimile: 213-430-6407
`
`Counsel for Petitioner Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
`
`Date: January 25, 2019
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`
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`-2-
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. § 42.6(e) and § 42.105 that on
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`January 25, 2019, a true and correct copy of PETITIONER’S NOTICE OF CROSS-
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`APPEAL was filed electronically through PTAB E2E, and was served by Express Mail,
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`tracking number POSL00516105, January 25, 2019, with the Director of the United
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`States Patent and Trademark Office, at the following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`In addition, the undersigned certifies that a copy of this Notice, along with the
`
`required docketing fee, was filed on January 25, 2019, with the Clerk’s Office for the
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`United States Court of Appeals for the Federal Circuit through the Court’s CM/ECF
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`filing system.
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`In addition, the undersigned certifies that a copy of this Notice was served via
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`electronic mail on Counsel for the Patent Owner at the following address of record:
`
`Michael N. Zachary (pro hac vice)
`Bunsow De Mory LLP
`701 El Camino Real
`Redwood City, CA 94063
`Telephone: 650-351-7248
`Facsimile: 415-426-4744
`mzachary@bdiplaw.com com
`
`Lauren N. Robinson (Reg. No. 74,404)
`BUNSOW DE MORY LLP
`701 El Camino Real
`
`Chris J. Coulson (Reg. No. 61,771)
`Bunsow De Mory LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Telephone: 646-502-6973
`Facsimile: 415-426-4744
`ccoulson@bdiplaw.com
`
`Craig Y. Allison (Reg. No. 38,067)
`BUNSOW DE MORY LLP
`701 El Camino Real
`
`-3-
`
`
`
`Redwood City, CA 94063
`lrobinson@bdiplaw.com
`
`
`Redwood City, CA 94063
`callison@bdiplaw.com
`
`
`
`Respectfully submitted,
`
`/s/ Marc J. Pensabene .
`Marc Pensabene (Reg. No. 37,416)
`mpensabene@omm.com
`O’MELVENY & MYERS LLP
`Times Square Tower, 7 Times Square
`New York, NY 10036
`Telephone: 212-326-2000
`Facsimile: 212-326-2061
`
`Attorney for Petitioner
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`-3-
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`
`
`Trials@uspto.gov
`571-272-7822
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`
`
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`
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`Paper No. 40
`Entered: September 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`IPR2017-01218
`Patent 8,983,134 B2
`____________
`
`
`Before JONI Y. CHANG, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2017-01218
`Patent 8,983,134 B2
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`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has shown, by a preponderance of the evidence, that claim 3 of
`U.S. Patent No. 8,983,134 B2 (Ex. 1001, “the ’134 patent”) is unpatentable,
`and Petitioner has not shown, by a preponderance of the evidence, that
`claims 4–6 of the ’134 patent are unpatentable.
`A. Procedural Background
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (“Petitioner”) filed a Petition requesting inter partes review of claims 3–
`6 (“the challenged claims”) of the ’134 patent pursuant to 35 U.S.C. §§ 311–
`319. Paper 2 (“Pet.”). The supporting Declaration of Dr. John C. Hart
`(“Hart Declaration”) was filed. Ex. 1002. Image Processing Technologies,
`LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 8
`(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314(a), on October 3, 2017, we
`instituted inter partes review on the following grounds:
`whether claim 3 would have been obvious under 35 U.S.C.
`§ 103(a) in view of Gerhardt1 and Bassman2; and
`whether claim 3 would have been obvious under 35 U.S.C.
`§ 103(a) in view of Gilbert3, Gerhardt, and Hashima4.
`
`
`1 U.S. Patent No. 5,481,622 (issued January 2, 1996) (Ex. 1013).
`2 U.S. Patent No. 6,044,166 (issued March 28, 2000) (Ex. 1014).
`3 Alton L. Gilbert, A Real-Time Video Tracking System, PAMI-2, NO. 1,
`IEEE TRANSACTIONS ON PATTERN ANALYSIS ANDMACHINE
`INTELLIGENCE, January, 1980. (Ex. 1005).
`4 U.S. Patent No. 5,521,843 (issued May 28, 1996) (Ex. 1006).
`
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`Patent 8,983,134 B2
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`See Paper 11 (“Inst. Dec.” or “Dec.”). Subsequent to institution, Patent
`Owner filed a Patent Owner Response (Paper 15, “PO Resp.”). Petitioner
`filed a Reply (Paper 22, “Pet. Reply”) to the Patent Owner Response.
`On April 24, 2018, the Supreme Court held that a final written
`decision in an inter partes review must decide the patentability of all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018) (“SAS”). Pursuant to SAS, on May 3, 2018, we instituted inter partes
`review on the following additional grounds:
`whether claims 4–6 would have been obvious under 35 U.S.C.
`§ 103(a) in view of Gerhardt and Bassman; and
`whether claims 4–6 would have been obvious under 35 U.S.C.
`§ 103(a) in view of Gilbert, Gerhardt, and Hashima.
`See Paper 25; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360–
`61 (Fed. Cir. 2018) (reading “the SAS opinion as interpreting the statute to
`require a simple yes-or-no institution choice respecting a petition, embracing
`all challenges included in the petition”); Guidance on the Impact of SAS on
`AIA Trial Proceedings (April 26, 2018) (available at
`https://www.uspto.gov/patents-application-process/patent-trial-and-
`appealboard/trials/guidance-impact-sas-aia-trial) (“[I]f the PTAB institutes a
`trial, the PTAB will institute on all challenges raised in the petition.”). The
`parties were requested to advise the Board if they wished to change the case
`schedule or submit further briefing in light of the institution on additional
`claims and grounds. Paper 25, 1. Petitioner requested additional
`supplemental briefing, and the request was granted. Paper 26, 4–5. Leave
`for additional supplemental briefing for both parties was also granted. Paper
`31. Petitioner filed a Supplemental Reply (Paper 29, “Pet. Supp. Reply”).
`
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`Patent 8,983,134 B2
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`Patent Owner filed a Response to Petitioner’s Supplemental Brief (Paper 34,
`“PO Supp. Resp.), and Petitioner filed a Reply to Patent Owner’s
`Supplemental Response (Paper 35, “Pet. Supp. Resp.).
`An oral hearing was held on June 29, 2018. A transcript of the
`hearing is included in the record. Paper 39 (“Tr.”).
`B. Related Proceedings
`The parties indicate that a related matter is Image Processing
`
`Technologies LLC v. Samsung Elecs. Co., No. 2:16-cv-00505-JRG (E.D.
`Tex.) (“the district court case”). Pet. 1, Paper 5, 1. Petitioner also indicates
`that it filed Case IPR2017-00353 against other claims of the ’134 patent.
`Pet. 2, 5–6. In Case IPR2017-00353, inter partes review was instituted. See
`Samsung Electronics Co., Ltd. v. Image Processing Tech. LLC, Case
`IPR2017-00353 (PTAB May 25, 2017) (Paper 12) (“the ’353 IPR”). A Final
`Written Decision issued in that inter partes review, with the determination
`that claims 1 and 2 of the ’134 patent are unpatentable. Samsung
`Electronics Co., Ltd. v. Image Processing Tech. LLC, Case IPR2017-00353
`(PTAB May 9, 2018) (Paper 37) (“’353 Final Written Decision”).
`C. The ’134 Patent
`The ’134 patent is entitled “Image Processing Method,” and issued on
`
`March 17, 2015 from an application filed on March 17, 2014. Ex. 1001,
`[22], [45], [54]. The ’134 patent claims priority to application FR 96 09420,
`dated July 26, 1996. Id. at [30]. The ’134 patent also claims priority to the
`following applications: (1) U.S. Patent Application No. 12/620,092, filed on
`November 17, 2009—now U.S. Patent No. 8,805,001; (2) U.S. Patent
`Application No. 11/676,926, filed on February 20, 2007—now U.S. Patent
`No. 7,650,015; (3) U.S. Patent Application No. 09/792,294, filed on
`
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`Patent 8,983,134 B2
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`February 23, 2001—now U.S. Patent No. 7,181,047; (4) U.S. Patent
`Application No. 09/230,502, filed on July 22, 1997—now U.S. Patent No.
`6,486,909; and (5) Application No. PCT/EP98/05383, filed on August 25,
`1998. Id. at [60].
`
`The ’134 patent is directed to an image processing system that
`identifies and localizes moving objects. Ex. 1001, 1:35–39. The input
`signal used in the system has “a succession of frames, each frame having a
`succession of pixels.” Id. at 3:31–34. Figure 14a of the ’134 patent is
`reproduced below.
`
`
`Figure 14a, above, depicts a velocity histogram, with classes C1–Cn
`representing a particular velocity. Ex. 1001, 20:49–54. Figures 16 and 17 of
`the ’134 patent are reproduced below.
`
`
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`5
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`
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`Figure 16, above, a system for video-conferencing, which depicts camera 13
`viewing a head. Ex. 1001, 8:59–60. Figure 17 depicts x axis and y axis
`histograms of a head from a video conference. Id. at 8:66–67, 22:4–6,
`22:55–67. Face V is approximately defined by the peaks in the two
`respective histograms. Id. at 23:1–9. Figure 22 of the ’134 patent is
`reproduced below.
`
`
`Figure 22, above, illustrates a situation where an area under consideration
`begins to cross the borders of a target. Ex. 1001, 24:38–42. Under these
`circumstances, histograms 222 and 224 for the x and y projections,
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`respectively, include pixels with significant variation, that allow the
`detection of target edges. Id. at 24:38–42. In a preferred embodiment, the
`center of the area “is determined to be (XMIN+ XMAX)/2, (YMIN+ YMAX)/2,
`where XMIN and XMAX are the positions of the minima and maxima of the x
`projection histogram, and YMIN and YMAX are the positions of the minima and
`maxima of the y projection histogram . . . Other methods of relocating the
`center of the target box may be used if desired.” Id. at 24:46–54.
`Claim 1, reproduced below, is not challenged here, but all the
`challenged claims at issue depend, directly or indirectly, from claim 1. See
`Ex. 1001, 26:36–27:3.
`
`1. A process of tracking a target in an input signal implemented
`using a system comprising an image processing system, the input
`signal comprising a succession of frames, each frame comprising a
`succession of pixels, the target comprising pixels in one or more of
`a plurality of classes in one or more of a plurality of domains, the
`process performed by said system comprising, on a frame-by-
`frame basis:
`
`forming at least one histogram of the pixels in the one or more
`of a plurality of classes in the one or more of a plurality of
`domains, said at least one histogram referring to classes defining
`said target; and
`
`identifying the target in said at least one histogram itself,
` wherein forming the at least one histogram further comprises
`determining X minima and maxima and Y minima and maxima of
`boundaries of the target.
`Ex. 1001, 26:36–50.
`
`II. ANALYSIS
`A. The Parties’ Post-Institution Arguments
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
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`claim 3 of the ’134 patent would have been unpatentable under 35 U.S.C.
`§ 103 over Gerhardt and Bassman and over Gilbert, Gerhardt, and Hashima.
`Dec. 7–29. We subsequently instituted review on claims 4–6 of the ’134
`patent on obviousness grounds based on the same prior art. Paper 25. We
`now determine whether Petitioner has established by a preponderance of the
`evidence that claims 3–6 are unpatentable under 35 U.S.C. § 103(a) over
`Gerhardt and Bassman and over Gilbert, Gerhardt, and Hashima. 35 U.S.C.
`§ 316(e). We previously instructed Patent Owner that “any arguments for
`patentability not raised and fully briefed in the [Patent Owner Response] will
`be deemed waived.” Paper 12, 3; see also 37 C.F.R. § 42.23(a) (“Any
`material fact not specifically denied may be considered admitted.”); In re
`Nuvasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding Patent
`Owner waived an argument addressed in Preliminary Response by not
`raising the same argument in the Patent Owner Response). Additionally, the
`Board’s Trial Practice Guide states that the Patent Owner Response “should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012).
`With a complete record before us, we note that we have reviewed
`arguments and evidence advanced by Petitioner to support its unpatentability
`contentions where Patent Owner chose not to address certain limitations in
`its Patent Owner Response and Patent Owner’s Response to Petitioner’s
`Supplemental Brief. Based on the preponderance of the evidence before us,
`we conclude that the art identified by Petitioner teaches or suggests all of the
`limitations of claim 3, but does not teach or suggest all of the limitations of
`claims 4–6 of the ’134 patent.
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`B. Claim Construction
`The parties concur that a district court-type claim construction under
`Phillips v. AWH Corp. should apply because the ’134 patent will expire
`within 18 months of the Notice of the Filing Date. Pet. 3–4; PO Resp. 12;
`see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see
`also 37 C.F.R. § 42.100(b). Under that standard, and absent any special
`definitions, terms are given “the meaning that [a] term would have to a
`person of ordinary skill in the art in question at the time of the invention.”
`Phillips, 415 F.3d at 1316.
`Challenged claims 3–6 depend directly or indirectly from independent
`claim 1, and include all its limitations. See Ex. 1001, 26:36–27:3.
`Therefore, we address disputed limitations of claim 1 as required to evaluate
`the challenges.
`
`“said at least one histogram referring to classes defining
`said target”
`
`In the Final Decision of the ’353 IPR, the Board considered the
`construction of the term “said at least one histogram referring to classes
`defining said target” of claim 1 of the ’134 patent. See ’353 Final Written
`Decision, 10–12. In the ’353 Final Written Decision, the Board found the
`term is not limited to “said at least one histogram referring to only classes
`defining said target.” Id. at 12.
`Here, Patent Owner proposes the same construction as in the ’353
`IPR: that the term “forming at least one histogram . . . said at least one
`histogram referring to classes defining said target” should be construed as
`“forming at least one histogram . . . at least one histogram being formed of
`pixels in the one or more classes that define said target.” PO Resp. 28.
`
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`Patent Owner further asserts that interpreting the term to not limit the
`histogram to pixels that meet the classification criteria that define the target
`is too broad. Id. at 29–30. In other words, as in the ’353 IPR, Patent Owner
`is arguing that the term be limited to only data for the pixels that match the
`classes that define the target.
`In addition to the arguments presented in the ’353 IPR, Patent Owner
`argues that an important aspect of the invention is a limitation reflected in
`the specification of the ’134 patent that allegedly describes that pixel data
`used to form histograms is limited to only those pixels with certain speed,
`color, or direction values. Id. at 28–29 (citing Ex. 1001, 25:51–67). Patent
`Owner avers that its proposed construction was adopted in the district court
`case, and that broadly interpreting the claim term is at odds with Phillips-
`type construction. Id. at 29–31 (citing Ex. 2001, 46). It is also argued that
`in the claim language “referring to” is different from “comprising” and
`indicates a more limited scope. Id. at 29, 31.
`We do not agree with Patent Owner’s arguments. As discussed in the
`’353 Final Written Decision, the specification contains disclosures that do
`not require limiting the recited histogram to only classes defining the target.
`’353 Final Written Decision, 12. Patent Owner’s contention that “referring
`to” is more limiting fails to support or explain why the term should
`effectively be construed to require “only referring to,” and using that
`construction would impermissibly import a limitation into the claim.5
`Finally, although the district court case’s construction uses the same
`language of Patent Owner’s proposed construction, the district court did not
`
`
`5 The district court found that the “‘referring’ word simply means that the
`histogram is formed of pixels.” Ex. 2001, 45.
`
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`address the variation that Patent Owner argues here, which is that the
`histogram be formed only of pixels whose properties match the classes that
`define the target. See Ex. 2001, 44–46.
`We adopt the ’353 IPR’s interpretation of this term and incorporate
`related portions of the ’353 Final Written Decision into this decision. ’353
`Final Written Decision, 10–12.
`Accordingly, we determine that “said at least one histogram referring
`to classes defining said target” is not limited to “said at least one histogram
`referring to only classes defining said target.” We need not further construe
`the term to resolve the issues before us.
`“wherein forming the at least one histogram further comprises
`determining X minima and maxima and Y minima and maxima of
`boundaries of the target”
`
`In the ’353 IPR, Patent Owner contended that the term “wherein
`forming the at least one histogram further comprises determining X minima
`and maxima and Y minima and maxima of boundaries of the target” of claim
`1 does not encompass creating a histogram and then determining the X
`minima and maxima and Y minima and maxima of the boundaries of the
`target from that histogram. ’353 Final Written Decision, 13. Patent Owner
`makes the same proposal for the construction of the term here. PO Resp. 20.
`In the ’353 Final Written Decision, the Board found that “claim 1 does not
`preclude creating a histogram, and then determining X minima and maxima
`and Y minima and maxima of boundaries of the target from that histogram,
`from both being part of the ‘forming’ step.” ’353 Final Written Decision,
`18.
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`In the ’353 IPR, Patent Owner argued the prosecution history, which
`the Board considered in determining that, contrary to Patent Owner’s
`arguments, there was no disavowal of claim scope or other statement in the
`prosecution history that limited claim 1 to a particular embodiment in the
`specification. See ’353 Final Written Decision 16–18 (citing Ex. 1004, 86,
`88, 146, 197–198). Patent Owner makes similar arguments concerning the
`’134 prosecution history in this case, referring to the same portions of the
`prosecution considered in the ’353 IPR. See PO Resp. 21–22. Under our
`review of the ’134 prosecution history, we concur with the ’353 IPR’s
`determination that the prosecution history does not disavow claim scope to
`limit it to a particular embodiment.
`In addition to the arguments that Patent Owner made in the ’353 IPR
`regarding the prosecution of the ’134 patent, Patent Owner presents
`additional arguments regarding the claim construction of the term. Patent
`Owner refers to the prosecution history of another patent that the ’134 patent
`is a continuation of, namely, U.S. Patent 8,805,001 (“the ’001 patent”). PO
`Resp. 14–18, 22–23; PO Supp. Resp. 5–7. Patent Owner argues that the
`Board’s adopted construction in the ’001 patent prosecution appears to
`encompass a prior art combination over a similar claim which was allowed.
`PO Resp. 22. Patent Owner’s arguments are similar to those for the ’134
`patent prosecution, and Patent Owner bases its arguments on its
`interpretation of the prosecution history, including what the Examiner
`should have understood about the teachings of the prior art and related claim
`construction. PO Supp. Resp. 5–7. We determine that Patent Owner’s
`interpretations are unsupported by the facts in the record and, moreover, we
`do not find a disavowal or other statement regarding an intent to limit the
`
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`claims to particular embodiments in the specification in the ’001 patent
`prosecution. See Ex. 1022, 65–66, 140–147, 153–161.
`Patent Owner also argues that the claim construction adopted in the
`’353 Final Written Decision is overly broad, and reads out the “comprising”
`language, allowing a “forming” step, and a “determining” step, with no
`relationship between the steps. PO Resp. 23–25; PO Supp. Resp. 1–2.
`Patent Owner additionally argues that the lock-on tracking embodiment in
`the ’134 patent teaches claim 1 under its proposed construction, which is that
`X and Y minima and maxima of boundaries of a target are determined as
`part of forming the histogram. PO Resp. 25–26; PO Supp. Resp. 2–3. We
`do not agree with Patent Owner’s arguments. The language of claim 1 itself
`does not limit it to Patent Owner’s proposed construction. And the
`construction of the ’353 Final Written Decision would be broad enough to
`cover the lock-on tracking embodiment.
`We adopt the ’353 IPR’s interpretation of this term and incorporate
`related portions of the ’353 Final Written Decision into this decision. ’353
`Final Written Decision, 13–18.
`Accordingly, we determine that the term “wherein forming the at least
`one histogram further comprises determining X minima and maxima and Y
`minima and maxima of boundaries of the target” does not preclude creating
`a histogram, and then determining X minima and maxima and Y minima and
`maxima of boundaries of the target from that histogram, from both being
`part of the “forming” step. We need not further construe the term to resolve
`the issues before us.
`
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`“forming at least one histogram of the pixels in the one or
`more of a plurality of classes in the one
`or more of a plurality of domains”
`Patent Owner proposes that “forming at least one histogram of the
`
`pixels in the one or more of a plurality of classes in the one or more of a
`plurality of domains” should be construed as “forming at least one histogram
`of the pixels in two or more classes that are in two or more domains.” PO
`Resp. 38. Patent Owner refers to intrinsic evidence that allegedly supports
`its proposed construction. Id. at 38–39.
`
`We do not agree with Patent Owner’s arguments because its proposed
`construction conflicts with the recited language of the claims which states
`that the forming of the histogram of the pixels is in “one or more” of the
`classes and domains and does not require that it be “two or more.” The
`district court also rejected Patent Owner’s similar arguments. See Ex. 2001,
`41–43.
`Accordingly, we determine that the term “forming at least one
`histogram of the pixels in the one or more of a plurality of classes in the one
`or more of a plurality of domains” does not require that the histogram be
`formed of pixels in two or more classes that are in two or more domains.
`We need not further construe the term to resolve the issues before us.
`Other Terms
`We determine that it is not necessary to provide an express
`interpretation of any other term of the claims. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`
`
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`C.
`
`Level of Ordinary Skill in the Art
`
`Petitioner’s expert, Dr. Hart, testifies that a person of ordinary skill at
`the time of the ’518 patent invention would have had
`either (1) a Master’s Degree in Electrical Engineering or
`Computer Science or the equivalent plus at least a year of
`experience in the field of image processing, image recognition,
`machine vision, or a related field or (2) a Bachelor’s Degree in
`Electrical Engineering or Computer Science or the equivalent
`plus at least three years of experience in the field of image
`processing, image recognition, machine vision, or a related
`field.
` Additional education could substitute for work
`experience and vice versa.
`Ex. 1002 ¶ 51; see also Pet. 4.
`The proposed qualifications were adopted in the Decision to Institute
`(Dec. 10 n.5), and Patent Owner also applied them. See PO Resp. 14.
`We adopt and apply the assessment of the level of ordinary skill in the
`art articulated by Petitioner to our obviousness analysis in this proceeding.
`In addition, we note that the art of record in this proceeding—namely,
`Gerhardt, Bassman, Gilbert, and Hashima—is indicative of the level of
`ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001).
`D. Obviousness of Claims 3–6 over Gerhardt and Bassman
` Petitioner contends that claims 3–6 are obvious over Gerhardt and
`Bassman. Pet. 37–54; Pet. Supp. Reply 6–8. To support its contentions,
`Petitioner provides evidence and explanations as to how the prior art
`combination teaches each claim limitation. Id. Petitioner also relies upon
`the Hart Declaration (Ex. 1002) to support its positions. Patent Owner
`counters that the prior art combination does not render claims 3–6 obvious
`because the prior art fails to teach or suggest some limitations of the claims
`
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`and a person of ordinary skill in the art would not have selected and
`combined the prior art. PO Resp. 53–72; PO Supp. Resp. 1–7.
`
`On this record, we determine that Petitioner has demonstrated that the
`preponderance of evidence shows that claim 3 is unpatentable as obvious
`over Gerhardt and in combination with Bassman for claim 3, but
`obviousness has not been demonstrated for claims 4–6. We begin our
`discussion with a brief summary of the prior art, and then address the
`evidence, analysis, and arguments presented by the parties.
`1. Gerhardt (Ex. 1013)
`Gerhardt is directed to tracking a target using “an eyetracking system”
`
`that “process[es] the digital pixel data to substantially determine the position
`of the user’s pupil.” Ex. 1013, Abs., 7:45–53. Gerhardt continuously
`acquires an eye image and attempts to locate the pupil by use of a
`continuous loop, with pupil location mapping to display screen coordinates,
`if a pupil is found. Id. at 8:45–52. Gerhard uses a “frame grabber,” coupled
`to a “camera means” used to acquire a video image, to subsequently generate
`a histogram using pixel intensity value, and to identify and track the position
`of a user’s pupil. Id. at 2:25–44, 9:39–61. Figure 5, reproduced below, is an
`example of a histogram for the captured eye image (id. at 4:38–39).
`
`
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`Figure 5, above, depicts a vertical axis indicates “the pixel count of each bin,
`and the horizontal axis indicates the magnitude of the pixel intensity of each
`bin,” with several bins of pixel intensity data, as “represented by a 7-bit
`greyscale . . . divided . . . into 128 bins.” Ex. 1013, 9:39–46.
`Bassman (Ex. 1014)
`2.
`Bassman is directed to image processing for sequences of images. Ex.
`
`1014, Abs. Bassman discloses a traffic monitoring system using a video
`camera, deriving successive image frames, and digitally processing the
`pixels of the successive image frames. Id. at 2:39–45. Figure 5, reproduced
`below, depicts an image derived from a video camera.
`
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`Figure 5, above, illustrates an image in which image pixels are integrated
`into a “1D strip,” with 1D strip 510 computed by integrating horizontally the
`amplitudes of the pixels across the image zone and subsampling the
`vertically-oriented integrated pixel amplitudes along the center of zone 508.
`Ex. 1014, 2:28–30, 6:16–20. Object detection may be done by computing a
`histogram of the image intensity values within the integration window
`centered at a pixel position. Id. at 6:60–63. Bassman discloses the use of an
`image-flow estimator with delay that “permit[s] objects to be tracked over
`time” by “computing and storing the average value contained within the
`integration window,” and “[b]y performing this operation at each strip pixel,
`a one-dimensional array of average brightness values is constructed.” Id. at
`7:7–12. Bassman also discloses that with “two corresponding arrays for
`images taken at times t-1 and t, the one-dimensional image ‘flow’ that maps
`pixels in one array to the other is computed,” and this is “used to track
`objects between each pair of successive image frames.” Id. at 7:12–17.
`
`
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`3. Analysis
` A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S
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