`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner
`____________________
`
`CASE IPR2017-01218
`Patent No. 8,983,134
`____________________
`
`
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Constitutionality of Inter Partes Review ........................................................ 2 
`
`III.  Overview of the ’134 Patent ............................................................................ 2 
`
`A. 
`
`B. 
`
`C. 
`
`Person of Ordinary Skill in the Art ..................................................... 10 
`
`Claim Language .................................................................................. 11 
`
`Claim Construction ............................................................................. 12 
`
`IV.  Legal Standards ............................................................................................. 13 
`
`V.  No Review Should be Instituted for Claims 3–6 ........................................... 17 
`
`A. 
`
`Petitioner Has Not Shown that the Asserted References Teach or
`Suggest All Elements of Claims 4, 5, or 6 of the ’134 Patent ............ 17 
`
`B. 
`
`C. 
`
`1.  Petitioner Has Not Shown that Gerhardt (Ex. 1013) or Bassman
`(Ex. 1014) Teach or Suggest All Elements of Claims 4, 5, or 6 .. 19 
`
`2.  Petitioner Has Not Shown that Gilbert (Ex. 1005), Gerhardt or
`Hashima (Ex. 1006) Teach or Suggest All Elements of Claims 4,
`5, or 6 ............................................................................................ 28 
`
`Neither Gerhardt nor Bassman Teaches or Suggests All Elements
`of Claim 3 ............................................................................................ 35 
`
`Petitioner Has Not Shown That a POSA Would Have Selected and
`Combined the Asserted References to Reach Claim 3 ....................... 39 
`
`1.  Petitioner Has Not Shown That a POSA Would Have Combined
`Gerhardt and Bassman .................................................................. 41 
`
`2.  Petitioner Has Not Shown That a POSA Would Have Combined
`Gilbert, Gerhardt and Hashima ..................................................... 45 
`
`D. 
`
`Petitioner’s Reasons for Combining the References Are Driven by
`Improper Hindsight Analysis .............................................................. 53 
`
`VI.  Conclusion ..................................................................................................... 56
`
`i
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`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`TABLE OF AUTHORITIES
`
`Cases 
`Apple Inc. v. Contentguard Holdings, Inc.,
` IPR2015-00442, Paper 9 (P.T.A.B. July 13, 2015) ............................... 14, 15, 16
`
`Google, Inc. v. Everymd.com LLC,
`IPR2014-00347, Paper 9 (P.T.A.B. May 22, 2014) ............................................. 14
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966), ......................................................................................... 13, 14
`
`Grain Processing v. American-Maize Prods,
` 840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 17
`
`In re Magnum Oil Tools Int’l.,
` 829 F.3d 1364 (Fed. Cir. 2016) .................................................................... 13, 15
`
`In re NTP, Inc.,
` 654 F.3d 1279 (Fed. Cir. 2011) .................................................................... 17, 54
`
`In re Omeprazole Patent Litigation,
` 536 F.3d 1361 (Fed. Cir. 2008) ........................................................................... 16
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................ 54
`
`InTouch Tech., Inc. v. VGo Communs., Inc.,
` 751 F.3d 1327 (Fed. Cir. 2014) ........................................................................... 17
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
` 688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 14, 54
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 16, 17
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
` CBM-2012-00003, Paper 7 (P.T.A.B. Nov. 26, 2012) ................................ 14, 15
`
`Ortho-McNeil Pharm. v. Mylan Labs,
` 520 F.3d 1358 (Fed. Cir. 2008) .................................................................... 17, 54
`
`ii
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................ 12
`
`Proctor & Gamble Co. v. Teva Pharm. USA, Inc.,
` 566 F.3d 989 (Fed. Cir. 2009) ...................................................................... 15, 16
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (2016),
`cert. granted sub nom. SAS Inst. Inc. v. Lee,
`137 S. Ct. 2160 (May 22, 2017) (No. 16-969) ..................................................... 13
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
` 814 F.3d 1309 (2016) .......................................................................................... 13
`
`Trivascular Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 54
`
`Unigene Labs., Inc. v. Apotex, Inc.,
` 655 F.3d 1352 (Fed. Cir. 2011) ........................................................................... 16
`
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
` 721 F.2d 1540 (Fed. Cir. 1983) .................................................................... 40, 54
`
`Whole Space Indus Ltd.,
` IPR2015-00488, Paper 14 (P.T.A.B. July 24, 2015) .......................................... 14
`
`Statutes 
`
`35 U.S.C. § 103 ................................................................................................. 13, 14
`
`
`
`
`
`LIST OF EXHIBITS
`
`2001
`
`
`
`
`
`Claim construction opinion in Image Processing Technologies, LLC
`v. Samsung Elecs. Co., et al., No. 16-cv-00505-JRG (E.D. Tex.),
`dated June 21, 2017.
`
`iii
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Patent Owner Image Processing Technologies LLC (“Patent Owner”) hereby
`
`submits this Preliminary Patent Owner’s Response to the Petition filed by Samsung
`
`Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`
`“Petitioner”) on March 31, 2017, in case IPR2017-01218 for review of claims 3–
`
`6 of U.S. Patent No. 8,983,134 (the “’134 patent”).
`
`I.
`
`INTRODUCTION
`
`The Board should not institute review because the Petition fails to establish a
`
`reasonable likelihood that the Petitioner would prevail with respect to any of the
`
`challenged claims.
`
`For challenged claims 4–6, as to each of Grounds 1 and 2, Petitioner has not
`
`shown that the asserted references teach or suggest at least the following elements:
`
`(i) “successively increasing the size of a selected area until the boundary of the
`
`target is found,” (claim 4) and (ii) “adjusting a center the selected area based upon
`
`a shape of the target until substantially the entire target is within the selected area,”
`
`(claim 5) as a part of “forming the at least one histogram” on a “frame-by-frame
`
`basis” as required by claims 4 and 5 respectively and thus dependent claim 6.
`
`For challenged claim 3, as to Ground 1, Petitioner has not shown that either
`
`Gerhardt or Bassman teaches or suggests all elements of claim 1, from which claim
`
`3 depends.
`
`1
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`For challenged claim 3, as to Grounds 1 and 2, Petitioner has not shown that
`
`a POSA would have combined the asserted references Gerhardt and Bassman
`
`(Ground 1) or Gilbert, Hashima, and Gerhardt (Ground 2) to arrive at the subject
`
`matter of challenged claim 3.
`
`The Board should therefore decline to institute an inter partes review of any
`
`of claims 3–6 of the ’134 patent.
`
`II. CONSTITUTIONALITY OF INTER PARTES REVIEW
`The Supreme Court recently granted certiorari in Oil States Energy Svcs. v.
`
`Greene’s Energy Group, No. 16-712 (cert. granted June 12, 2017) regarding the
`
`question of whether inter partes review proceedings violate the Constitution by
`
`extinguishing private property rights through a non-Article III forum without a
`
`jury. Accordingly, Patent Owner reserves the right to challenge the
`
`constitutionality of this proceeding.
`
`III. OVERVIEW OF THE ’134 PATENT
`The ’134 patent is directed to efficient, real-time identification and
`
`localization of a wide range of moving objects using histograms. E.g., Ex. 1001,
`
`1:35–39, 3:31–41. The inventor developed a system that can track a target object
`
`using multiple characteristics, such as velocity, direction, hue, saturation, etc. E.g.,
`
`Ex. 1001, 25:22–34, 25:58–67. Tracking techniques known at the time of the
`
`invention of the ’134 patent were inadequate because, for example, they were
`
`2
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`memory intensive, limited in terms of the information obtained about an object,
`
`could not provide information in real-time, used complex algorithms for computing
`
`object information, or were designed to detect only one type of object. E.g.,
`
`Ex. 1001, 1:41–2:6, 2:41–3:14.
`
`The ’134 patent overcame the limitations of the prior art through a number
`
`of novel techniques, including generating histograms of multiple pixel parameters
`
`being detected with the aid of classifiers that enable only data having selected
`
`classification criteria to possibly be included in the histograms; tracking a target
`
`using histograms that are formed based on determined boundaries of the target; and
`
`tracking a target by analyzing pixel data in successively larger areas of pixel data,
`
`starting from a point within the target, until the boundaries and center of the target
`
`are found. E.g., Ex. 1001, 18:11–14, 18:46–52, 21:48–22:3, 23:59–25:2.
`
`In Figure 10 of the ’134 patent, an image processing system (11) is shown in
`
`connection with a histogram processor 22a. Image processing system (11) receives
`
`digital video signal S(PI) originating from a video camera or other imaging device.
`
`Ex. 1001, 9:23–26. S(PI) represents the pixel values PI of video signal S, in a
`
`succession of frames, each representing an instant in time. Ex. 1001, 9:35–51,
`
`9:60–10:2, 11:44–47. Image processing system (11) outputs signals SR (delayed
`
`video signal) and also calculated values such as speed (V) and oriented direction of
`
`displacement (DI) for pixels in the image. Ex. 1001, 9:59–10:7. A bus Z–Z1 (the
`
`3
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`dotted line which appears in both Figures 10 and 11) transfers output signals of the
`
`image processing system (11) to histogram processor (22a). Ex. 1001, 16:45–53.
`
`Ex. 1001, Fig. 10 (page 7, annotated)
`
`
`
`Figure 11 of the ’134 patent shows an example of a histogram processor 22a
`
`with multiple histogram formation blocks 24–29. Ex. 1001, 16:54–60. Block 24
`
`enables a histogram to be formed in the luminance domain (ranging from 0–255).
`
`Id. at 16:62–17:3. Similarly, the domain for Block 25 is speed (V) (ranging from
`
`0–7). Id. at 17:4–10. The domain for Block 26 is oriented direction (DI) (ranging
`
`from 0–7). Id. at 17:11–18. The domain for Block 27 is time constant (CO)
`
`(ranging from 0–7). Id. at 17:19–26. The domain for Block 28 is position on the
`
`x-axis (range corresponding to the number of pixels in a line). Id. at 17:27–38,
`
`18:53–58, 20:55–21:11. The domain for Block 29 is position on the y-axis (range
`
`corresponding to the number of lines in a frame). Id. The histogram formation
`
`blocks and other components are interconnected by a bus 23. Id. at 16:54–56.
`
`4
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Ex. 1001, Fig. 11 (page 8, annotated)
`
`
`
`A validation unit accompanies each histogram formation block of Figure 11.
`
`Figure 13, referring to histogram formation block 25 and validation unit 31 of
`
`Figure 11, shows a histogram formation block with a classifier 25b. The classifier
`
`has registers that permit classification criteria to be individually selected: “[b]y
`
`way of example, register 106 will include, in the case of speed, eight registers
`
`numbered 0–7. By setting a register to ‘1’, e.g., register number 2, only data that
`
`meet the criteria of the selected class, e.g., speed 2, will result in a classification
`
`output of ‘1’.” Ex. 1001, 18:20–24.
`
`5
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Ex. 1001, Fig. 13 (page 10, annotated)
`
`
`
`The number of registers can vary depending on the domain of the classifier.
`
`E.g., Ex. 1001, 18:29–42. For example, “[t]he classifier associated with histogram
`
`formation block 24 preferably has 256 registers, one register for each possible
`
`luminance value of the image.” Ex. 1001, 18:30–32. The interaction between the
`
`classifiers and the validation units in connection with histogram formation is
`
`significant. In particular, “[t]he output of each classifier is communicated to each
`
`of the validation blocks 30-35 via bus 23, in the case of histogram formation
`
`blocks 28 an[d] 29, through combination unit 36,” and “[v]alidation units 30–35
`
`receive the classification information in parallel from all classification units in
`
`6
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`histogram formation blocks 24–29.” Ex. 1001, 18:42–48. Further, each validation
`
`unit generates a validation signal that determines “for each incoming pixel,
`
`whether the histogram formation block will utilize that pixel in forming it [sic]
`
`histogram.” Ex. 1001, 18:48–52.
`
`The ’134 patent teaches the use of histograms to track a target. As shown in
`
`the example of Figures 20–23, tracking may involve displaying a tracking box. In
`
`Figure 21, an initial starting pixel is designated and the system “will process the
`
`pixels in successively larger areas surrounding the [starting] pixel, adjusting the
`
`center of the area based upon the shape of the object, until substantially the entire
`
`target area is being tracked.” Ex. 1001, 24:1–7. A bounded area (XA, XB, YC, YD)
`
`corresponding to the tracking box is set by configuring the classification units of x
`
`and y histogram formation blocks 28 and 29 (Figure 11), so that the only pixels
`
`that will be processed by the system are those falling within the bounded area.
`
`Ex. 1001, 24:7–12.
`
`After the bounded area is set, the x and y histogram formation blocks
`
`attempt to form histograms, but since there are an insignificant number of pixels
`
`meeting the selected criteria (in this example, DP=1), no histograms are actually
`
`formed at this point. Ex. 1001, 24:25–29. The size of the bounded area is then
`
`successively increased, for example, to XA-nK, XB+nK, YA-nK, YB+nK (where n is the
`
`current iteration and K is a constant) until “the histogram formed by either of
`
`7
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`histogram formation blocks 28 and 29 contains meaningful information, i.e., until
`
`the box overlaps the boundary of the target.” Ex. 1001, 24:29–38. “The process is
`
`continued until the histogram formed by either of histogram formation units 28 and
`
`29 [x and y histogram units] contains meaningful information, i.e., until the box
`
`overlaps the boundary of the target.” Ex. 1001, 24:35–38. As the area under
`
`consideration begins to cross the borders of the target, the x and y histograms will
`
`begin to include pixels which correspond to a target edge. Ex. 1001, 24:38–42. At
`
`that point, the center of the area under consideration will be adjusted based on the
`
`x and y histograms to account for the case where the initial starting position is
`
`nearer to one edge of the target than to another. Ex. 1001, 24:42–54. Figure 22
`
`shows the bounded area beginning to cross the borders of the target, together with
`
`corresponding histograms 222 and 224. When this occurs, the center of the area
`
`under consideration, i.e., the bounded area, is adjusted based upon the content of
`
`histograms 222 and 224. Ex. 1001, 24:38–54.
`
`8
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Ex. 1001, Fig. 22 (page 15, annotated)
`
`
`
`After additional iterations, the tracking box will be larger than the target in
`
`that XA-nk<XMIN, XA+nK>XMAX, YA-nK<YMIN, and YA+nK>YMAX. Ex. 1001, 24:55–59,
`
`Figure 23. When this occurs, the entire target is bounded, and the size of the
`
`tracking box is reduced to better track the target. Ex. 1001, 24:55–65. In this
`
`manner, histograms are formed based on the determined X minima and maxima
`
`and Y minima and maxima of boundaries of the target, and “in the course of
`
`tracking a target, the tracking box will be enlarged and reduced as appropriate to
`
`maintain a track of the target, and is preferably adjusted on a frame by-frame
`
`basis.” Ex. 1001, 24:66–25:2.
`
`9
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Ex. 1001, Fig. 23 (page 13, annotated)
`
`
`
`A.
`Person of Ordinary Skill in the Art
`For purposes of this inter partes review, Patent Owner submits that a person
`
`of ordinary skill in the art (or “POSA”) in 1996 (the foreign priority date of the
`
`’134 patent) would be someone with an undergraduate degree in electrical
`
`engineering or image processing or a related field, followed by at least two years of
`
`graduate coursework and also at least early-stage thesis research, in digital image
`
`processing. The requisite knowledge and experience would have been acquired,
`
`for example, by someone who had completed all coursework in a two year
`
`master’s program focused on digital image processing, along with at least some
`
`thesis research qualifying towards a degree in such a program.
`
`10
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`B. Claim Language
`Claims 3, 4, 5, and 6 of the ’134 patent are reproduced below in their
`
`entirety, labeled with the Petition’s element notation for convenience.
`
`[3] The process according to claim 1, wherein said image processing
`system comprises at least one component selected from a memory, a
`temporal processing unit, and a spatial processing unit.
`[4] The process according to claim 1, wherein forming the at least one
`histogram further comprises successively increasing the size of a
`selected area until the boundary of the target is found
`[5] The process according to claim 4, wherein forming the at least one
`histogram further comprises adjusting a center of the selected area
`based upon a shape of the target until substantially the entire target is
`within the selected area.
`[6] The process according to claim 5, wherein forming the at least one
`histogram further comprises setting the X minima and maxima and Y
`minima and maxima as boundaries in X and Y histogram formation
`units such that only pixels within the selected area will be processed
`by the image processing system.
`
`As seen above, Claim 6 depends from claim 5, which depends from claim 4,
`
`which depends from claim 1. Claim 3 depends from claim 1. If the Petition
`
`fails to meet its burden to prove that it is likely to prevail as to any particular
`
`claim, it also fails against any claims which depend from that claim. This
`
`Preliminary Response will thus focus primarily on the claims from which
`
`others depend, i.e. claims 1, 4, and 5.
`
`11
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`C. Claim Construction
`Petitioner proposes that the claims be construed pursuant to the standard in
`
`Phillips v. AWH Corp., under which “the ordinary and customary meaning of a
`
`claim term is the meaning that the term would have to a person of ordinary skill in
`
`the art in question at the time of the invention, i.e., as of the effective filing date of
`
`the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
`
`2005).
`
`Patent Owner agrees that the Phillips standard should apply for purposes of
`
`this inter partes review. For the Board’s reference, Patent Owner includes as
`
`Exhibit 2001 the court’s June 21, 2017 claim construction opinion in Image
`
`Processing Technologies, LLC v. Samsung Elecs. Co., et al., No. 16-cv-00505-JRG
`
`(E.D. Tex.).
`
`In the earlier-filed IPR2017-00353 challenging claims 1 and 2 of the ’134
`
`patent, the Board construed the phrase “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” to encompass forming the histogram in “at least one class from among
`
`a plurality of possible classes and at least one domain from among a plurality of
`
`possible domains.” Samsung Elecs. Co. v. Image Processing Techs., LLC,
`
`IPR2017-00353, Paper 12 at 10 (P.T.A.B. May 25, 2017). While disagreeing with
`
`this construction for the reasons stated in its preliminary response filed in that
`
`12
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`proceeding Samsung Elecs. Co. v. Image Processing Techs., LLC, IPR2017-00353,
`
`Paper 6 at 15–19 (P.T.A.B. Mar. 14, 2017). Patent Owner will assume the Board’s
`
`construction solely for purposes of the preliminary response in this proceeding,
`
`reserving the right to raise the issue if the Board determines to institute review in
`
`this IPR proceeding.
`
`IV. LEGAL STANDARDS
`Petitioner has the burden to show that it is likely to prevail as to at least one
`
`claim of the ’134 patent. 35 U.S.C. § 314. The Board may decline to institute the
`
`petition as to any claim for which the Board determines that Petitioner has not
`
`shown it is likely to prevail. SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d
`
`1341, 1352 (Fed. Cir. 2016), cert. granted sub nom. SAS Inst. Inc. v. Lee, 137 S. Ct.
`
`2160 (May 22, 2017) (No. 16-969); Synopsys, Inc. v. Mentor Graphics Corp., 814
`
`F.3d 1309, 1316–17 (Fed. Cir. 2016).
`
`All three of Petitioner’s Grounds rely on obviousness combinations. To
`
`make a prima facie showing of obviousness for a challenged claim under 35 U.S.C.
`
`§ 103, the Petition must, among other requirements, fulfill the requirements set
`
`forth in Graham v. John Deere Co., 383 U.S. 1 (1966), including demonstrating
`
`that the cited references, in combination, disclose each element of the claim. In re
`
`Magnum Oil Tools Int’l., 829 F.3d 1364, 1376 (Fed. Cir. 2016); see Apple Inc. v.
`
`13
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Contentguard Holdings, Inc., IPR2015-00442, Paper 9 at 12 (P.T.A.B. July 13,
`
`2015).
`
`A legal conclusion of obviousness must be based on a factual background
`
`developed by consideration of each of the following factors: (1) the scope and
`
`content of the prior art; (2) the differences between the prior art and the claims at
`
`issue; and (3) the level of ordinary skill in the art at the time of the invention. See
`
`35 U.S.C. § 103(a); Graham, 383 U.S. 1 at 17–18. Without exception,
`
`consideration of every factor in the Graham framework is mandatory. Kinetic
`
`Concepts, 688 F.3d at 1360 (Fed. Cir. 2012); see Liberty Mut. Ins. Co. v.
`
`Progressive Cas. Ins. Co., CBM-2012-00003, Paper 7 at 3 (Order) (P.T.A.B.
`
`Nov. 26, 2012).
`
`In particular, an obviousness analysis must identify the difference(s)
`
`between the claim and the prior art. Kinetic Concepts, Inc. v. Smith & Nephew,
`
`Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (“Indeed, courts must consider all of the
`
`Graham factors prior to reaching a conclusion with respect to obviousness.”);
`
`Whole Space Indus Ltd., IPR2015-00488, Paper 14 at 15 (P.T.A.B. July 24, 2015)
`
`(differences between the prior art and the claims at issue is one of the fundamental
`
`factual inquiries underlying an obviousness analysis); Google, Inc. v. Everymd.com
`
`LLC, IPR2014-00347, Paper 9 at 25 (P.T.A.B. May 22, 2014) (“Rather,
`
`Petitioners’ summaries, quotations, and citations from both references, with
`
`14
`
`

`

`IPR2017-01218 (’134 Patent) Preliminary PO Response
`
`Belanger’s figures, place the burden on us to . . . identify any differences between
`
`the claimed subject matter and the teachings of Shah and Belanger.”) (emphasis
`
`added); Liberty Mut., CBM-2012-00003, Paper 7 at 2–3 (“Differences between the
`
`claimed invention and the prior art are a critically important underlying factual
`
`inquiry for any obviousness analysis.”).
`
`Petitioner also has the burden to show whether there would have been a
`
`motivation or reason to combine the asserted prior art, and whether the proposed
`
`combination would render the patented claims obvious. In re Magnum Oil Tools,
`
`829 F.3d at 1376.
`
`A petition must provide an explicit rationale to make proposed modifications
`
`to or combinations of the prior art references, despite the differences between the
`
`claimed invention and the prior art, without relying on the patent disclosure itself.
`
`Apple Inc. v. Contentguard, Paper 9 at 15; see also Proctor & Gamble Co. v. Teva
`
`Pharm. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009).
`
`A petition must also explain why a person of ordinary skill in the art would
`
`simultaneously make multiple changes and implementation choices to arrive at a
`
`particular invention. Apple Inc. v. Contentguard, Paper 9 at 16–17 (“[W]e are not
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`persuaded that the Petition sufficiently explains why a person of ordinary skill
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`would simultaneously make all of the many particular proposed changes and
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`implementation choices”) (internal citations omitted). Even if individual
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`IPR2017-01218 (’134 Patent) Preliminary PO Response
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`modifications or choices were obvious, a petition must explain why making all of
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`the changes at once would be obvious. Id. at 16–17 (“[T]he mere fact that
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`individual changes might have been obvious does not make doing all of the
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`changes at once obvious.”).
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`Most inventions rely on known building blocks, so Petitioner must show that
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`a POSA would both select and combine the building blocks “in the normal course
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`of research and development to yield the claimed invention.” Unigene Labs., Inc.
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`v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 421 (2007)) (emphasis added). It is important to
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`identify a reason and motivation that would have prompted a POSA to combine the
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`prior art elements in the way claimed in the challenged patent, to achieve the
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`invention. Proctor & Gamble Co., 566 F.3d at 994; KSR, 550 U.S. at 418–19.
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`“Obviousness requires more than a mere showing that the prior art includes
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`separate references covering each separate limitation in a claim under
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`examination.” Unigene Labs, 655 F.3d at 1360 (citing KSR, 550 U.S. at 418). The
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`lack of a technological obstacle to combining references, in and of itself, does not
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`justify a finding of obviousness. See In re Omeprazole Patent Litigation, 536 F.3d
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`1361, 1380-81 (Fed. Cir. 2008). A reason for combining disparate prior art
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`references is critical and should be made explicit. InTouch Tech., Inc. v. VGo
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`IPR2017-01218 (’134 Patent) Preliminary PO Response
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`Communs., Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (citing KSR, 550 U.S. at
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`418).
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`Hindsight analysis is inappropriate; obviousness must be measured “at the
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`time the invention was made.” Ortho-McNeil Pharm. v. Mylan Labs, 520 F.3d
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`1358, 1364 (Fed. Cir. 2008) (emphasis in original). The Petitioner must not use
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`the patent as a roadmap. In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011)
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`(citing Grain Processing v. American-Maize Prods, 840 F.2d 902, 907 (Fed. Cir.
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`1988)); see also KSR, 550 U.S. at 421.
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`V. NO REVIEW SHOULD BE INSTITUTED FOR CLAIMS 3–6
`No review should be instituted for claims 3–6 of the ’134 patent for the
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`reasons set forth below.
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`A.
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`Petitioner Has Not Shown that the Asserted References Teach or
`Suggest All Elements of Claims 4, 5, or 6 of the ’134 Patent
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`As to each of Grounds 1 and 2, Petitioner has not shown that the asserted
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`references teach or suggest all elements of claims 4, 5, or 6. Accordingly, no
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`review should be instituted for claims 4, 5, or 6.
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`Grounds 1 and 2 suffer from the same deficiencies with respect to claims 4,
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`5, and 6. First, none of the asserted references teaches or suggests, alone or in the
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`asserted combinations: “successively increasing the size of a selected area until the
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`boundary of the target is found” (claim 4) and “adjusting a center the selected area
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`based upon a shape of the target until substantially the entire target is within the
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`IPR2017-01218 (’134 Patent) Preliminary PO Response
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`selected area,” (claim 5) as a part of “forming the at least one histogram” on a
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`“frame-by-frame basis.”
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`Claim 6 depends from claim 5, which depends from claim 4, which depends
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`from claim 1. Claims 4, 5, and 6, therefore, include all limitations of claim 1, in
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`particular the paragraph relating to “forming at least one histogram,” which is
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`performed “on a frame-by-frame basis.” Claims 4 and 5 are copied below
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`alongside the relevant portion of claim 1, using the Petition’s element notation for
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`convenience:
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`[1[pre]] . . . the process performed by said system comprising, on a
`frame-by-frame basis:
`[1[a]] 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;
`. . .
`[4] The process according to claim 1, wherein forming the at least one
`histogram further comprises successively increasing the size of a
`selected area until the boundary of the target is found
`[5] The process according to claim 4, wherein forming the at least one
`histogram further comprises adjusting a center of the selected area
`based upon a shape of the target until substantially the entire target is
`within the selected area.
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`Ex. 1001, 26:41–46, 26:57–64 (emphasis added). The steps in claims 4 and 5 (and
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`thus dependent claim 6) must therefore occur “on a frame-by-frame basis,” as a
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`part of forming the at least one histogram.
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`1.
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`Petitioner Has Not Shown that Gerhardt (Ex. 1013) or
`Bassman (Ex. 1014) Teach or Suggest All Elements of
`Claims 4, 5, or 6
`
`As to Ground 1, Gerhardt and Bassman do not, alone or in combination,
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`teach or suggest: (i) “successively increasing the size of a selected area until the
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`boundary of the target is found,” (claim 4) and (ii) “adjusting a center the selected
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`area based upon a shape of the target until substantially the entire target is within
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`the selected area,” (claim 5) as a part of “forming the at least one histogram” on a
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`“frame-by-frame basis” as required by claims 4 and 5(and thus dependent claim 6),
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`elements [1[pre]], [1[a]], [4], and [5].
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`a. Gerhardt
`Petitioner has not shown that Gerhardt teaches or suggests that “successively
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`increasing the size of a selected area until the boundary of the target is found”
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`(claim 4) or “adjusting a center of the selected area based upon a shape of the
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`target area until substantially the entire target is within the selected area” (claim 5)
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`occurs as a part of “forming the at least one histogram” on a “frame-by-frame basis”
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`as required by Claims 4 and 5 (and thus dependent claim 6).
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`Gerhardt does not teach “successively increasing the size of a selected area
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`until the boundary of the target is found” on a frame-by-frame basis because the
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`active window can only be adjusted over several frames until the pupil blob is
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`selected and is only disclosed as occurring after histogram formation.
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`Petitioner relies on the disclosure of Gerhardt that “the size of the active
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`window can be incrementally increased until the pupil blob is again successively
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`detected.” Petition, 51 (citing Ex. 1013, 21:1–18). The surrounding text of this
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`quotation is as follows:
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`In some cases the use of a smaller active image region will result in a
`failure to select the pupil blob. In these cases, in a manner similar to
`that described above for percentage comparison tolerances, the size of
`the active window can be incre