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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
`Petitioner
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`v.
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`Image Processing Technologies, LLC,
`Patent Owner.
`
`______________________________________________
`CASE IPR2017-01218
`Patent No. 8,983,134
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`I.
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`SUMMARY OF ISSUES FOR REHEARING
`Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America,
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`Inc. (collectively “Samsung”) requests rehearing under 37 C.F.R. § 42.71(d) of the
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`Board’s Final Written Decision (“Decision,” Paper No. 40) holding that Petitioner
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`has not demonstrated that claims 4-6 of U.S. Patent No. 8,983,134 (“the ’134
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`patent”) are unpatentable. Decision at 16, 45. Samsung requests this rehearing
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`based on the following misapprehension of fact:
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`• The Board misapprehended the ’134 Patent’s claim language and
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`specification when it determined that the steps of claim 4—forming
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`the histogram further comprises successively increasing the size of a
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`selected area until the boundary of the target is found—must be
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`completed within a single frame. Id. at 28-29.
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`This misapprehension directly led the Board to at least two incorrect conclusions.
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`First, despite finding that the prior art Gerhardt reference discloses
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`incrementally increasing the active window size until the target is found and that
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`this process is part of forming a histogram, the Board incorrectly concluded that
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`Gerhardt does not teach the limitations of claim 4 because the portion of Gerhardt
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`relied upon requires multiple frames. Id. at 32.
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`1
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`Second, because claims 5 and 6 depend from claim 4, the Board incorrectly
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`concluded that it need not consider Samsung’s arguments regarding the invalidity
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`of claims 5 and 6 over the combination of Gerhardt and Bassman. Id.
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`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d). Here, the Board misapprehended facts, presented in detail below, that
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`led it to adopt an incorrect construction of claim 4. Samsung addressed this matter
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`in its previous filings in this case, as set forth in the citations to the record below.
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`Samsung, therefore, respectfully requests that the present motion for
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`reconsideration be granted, and claims 4-6 of the ’134 Patent be canceled.
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`III. ARGUMENT
`A. The Board Misapprehended the ’134 Patent’s Claims and
`Specification in Requiring Claim 4’s Steps to Complete Within a
`Single Frame
`In its Decision, the Board expressly construed several terms appearing in
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`independent claim 1 but did not construe the final phrase of claim 1’s preamble,
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`“on a frame-by-frame basis,” instead stating “[w]e determine that it is not
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`necessary to provide an express interpretation of any other term of the claims.”
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`Decision at 14. Nevertheless, the Board interpreted “on a frame-by-frame basis,”
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`2
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`which appears only in claim 1’s preamble, to require that claim 4’s recitation of
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`“successively increasing the size of a selected area until the boundary of the target
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`is found” must occur within a single frame. Id. at 28-29.
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`In reaching its conclusion, the Board misinterpreted the claim language and
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`specification. The claim language does not recite any limitation requiring claim
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`4’s recitation of “successively increasing the size of a selected area until the
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`boundary of the target is found” to occur within a single frame. As Samsung
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`explained in its briefing, such an interpretation is also inconsistent with the
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`specification’s disclosure of adjusting the size of the “selected area” or “tracking
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`box” over multiple frames during the lock on tracking process depicted in Figures
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`21-23. Paper 29 (Pet. Supp. Reply) at 4-5. In its Decision, the Board even
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`conceded the specification makes such a “suggestion of multiple frames” during
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`tracking (Decision at 30), pointing to the specification’s statement that the size of
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`the tracking box “is preferably adjusted on a frame-by-frame basis” (id. at 29-30
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`(quoting Ex. 1001, 24:66-25-2)).
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`However, the Board misinterpreted the specification as describing the
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`“determination of target limits” (or “lock on” process) to be distinct from the
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`“tracking” process in which the area “is preferably adjusted on a frame-by-frame
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`basis.” Id. at 29-30 (quoting Ex. 1001, 24:66-25-2). The Board stated “[o]nly in
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`the process of tracking, not in the determination of target limits, is there a
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`3
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`suggestion of multiple frames.” Id. at 30. But the patent specification belies this
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`conclusion. The Board overlooked the sentence in the specification explicitly
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`stating that the determination of target limits or (“lock on”) is part of “tracking a
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`target,” not a separate process. The specification states:
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`[W]hen initially tracking a target, constant K is preferably relatively
`large, e.g., 10-20 pixels or more, in order that the system may lock on
`the target expeditiously. Once a target has been locked onto, K may be
`reduced. It will be appreciated that 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 (’134 Patent) at 24:62-25:21; Paper 29 (Pet. Supp. Reply) at 4 (quoting
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`this disclosure). In other words, the specification uses the phrase “tracking a
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`target” to encompass both the initial phase, in which K is large and the system is
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`trying to “lock on” the target, as well as the later phase in which K has been
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`reduced after the target has been locked onto. Indeed, when the system is “initially
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`tracking a target,” it has not yet “locked onto” the target, but the process is
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`nevertheless described as “tracking.” The last sentence of the quote above, in
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`context, thus makes clear that the description of adjusting the tracking box “on a
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`frame-by-frame basis” in the “course of tracking” does not apply only after the
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`boundaries of the target have been found and locked onto but also during the lock
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`1 All emphasis added unless indicated otherwise.
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`4
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`on process while the target’s boundaries are being determined. Paper 29 (Pet.
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`Supp. Reply) at 4.
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`As Samsung argued in its briefing, the lock on tracking embodiment is also
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`described as occurring over at least three frames as depicted in Figures 21, 22, and
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`23, not only within a single frame as interpreted by the Board. Paper 29 (Pet.
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`Supp. Reply) at 3-4. Samsung noted that in each of these figures, a new histogram
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`is created. Id. at 4. These figures must depict new frames because the only way
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`the patent describes clearing the histogram memory so that a new one may be
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`formed is by setting the “init=1” signal “between frames.” Id. at 5 (citing Ex. 1001
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`(’134 Patent) at 17:55-62; 19:63-20:3 (“At the completion of the formation of the
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`histogram in memory 100 at the end of each frame, . . . the memories 100 are
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`cleared and units 112 are re-initialized for processing the next frame.”)). While the
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`Board apparently credits Patent Owner’s assertion that frame data is stored and
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`thus could be re-processed into histograms multiple times (Decision at 30), it does
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`not address the fact that the patent nowhere discloses processing a frame multiple
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`times and nowhere discloses any other mechanism by which the histogram
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`memories might be cleared and reset except by the end-of-frame “init=1” signal.
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`Thus, the specification does not support the Board’s apparent conclusion that
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`Figures 21-23 depict a single frame.
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`5
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`Although it did not state so explicitly, to the extent the Board credits Patent
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`
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`Owner’s argument that the multiple histograms of Figures 21-23 need not be
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`cleared but might just have further data added as the size and position of the
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`selected area is adjusted, Samsung pointed out it in its briefing that this cannot be
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`correct. Paper 29 (Pet. Supp. Reply) at 2. In addition to the fact that “adding to”
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`an existing histogram is never described in the patent, claim 6, which depends from
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`claim 4, is inconsistent with Patent Owner’s assertion. Claim 6 recites:
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`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.
`Id. at 2 (citing Ex. 1001 (’134 Patent) at claim 6). If the size and location of the
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`selected area were changed without clearing the histogram, the histogram would
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`not include the results of processing “only the pixels within the selected area” as
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`claim 6 requires because the histogram would also include data from the previous
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`selected area. Thus, the Patent Owner’s interpretation (which the Board may or
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`may not be relying on) would render claim 6 non-functional and cannot be correct.
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`Thus, the Board’s interpretation of claim 4, requiring that “successively
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`increasing the size of a selected area until a boundary of the target is found” must
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`occur within a single frame, is unreasonably narrow and reflects a misapprehension
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`of the patent’s claims and specification.
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`6
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`B.
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`The Board Erroneously Concluded that Gerhardt Does Not
`Disclose Claim 4
`Because of the misapprehension of the patent’s disclosure and claim scope
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`discussed above, the Board incorrectly concluded that Gerhardt does not disclose
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`claim 4 because Gerhardt’s teaching of iteratively increasing area size to find a
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`target takes place over multiple frames. Decision at 31-32.
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`In the Decision, the Board correctly noted Gerhardt discloses “‘the size of
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`the active window can be incrementally increased until the pupil blob is again
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`successfully selected.’” Id. at 31 (quoting Ex. 1013, 21:1-18). But the Board then
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`stated:
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`Although a histogram is formed as part of the process in the “Threshold
`Image” step shown in Figure 16, Gerhardt does not teach increasing the
`size of a selected area until the boundary of a target is found in one
`frame.
`Id. at 32 (emphasis added). Thus, if the proper construction of claim 4 is applied,
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`the only basis for the Board’s finding that Gerhardt does not disclose claim 4 is
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`eliminated.
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`C. The Board Incorrectly Concluded It Need Not Consider the
`Validity of Claims 5 and 6 Over Gerhardt and Bassman
`Claims 5 and 6 depend from claim 4. The Board stated “[i]n light of the
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`insufficiency of the evidence demonstrating that the limitations of claim 4 are
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`taught by Gerhardt and Bassman, there is also insufficient evidence of the
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`teachings of the limitations of claims 5 and 6.” Id. at 32. Thus, the Board’s
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`7
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`misapprehension of fact leading to its incorrect construction of claim 4 also
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`directly led to its failure to consider the validity of claims 5 and 6 over Gerhardt
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`and Bassman.
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`IV. CONCLUSION
`For the reasons set forth above, Petitioner respectfully requests that the
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`Board institute a rehearing to cancel claims 4-6 of the ’134 Patent.
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`Respectfully Submitted,
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`
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`/s/ Nicholas Whilt
`Nicholas Whilt (Reg. 72,081)
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`8
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`
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`Petitioner’s Rehearing Request
`IPR2017-01218 (U.S. 8,983,134)
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`CERTIFICATE OF SERVICE
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`The undersigned certifies pursuant to 37 C.F.R. § 42.6(e) and § 42.105 that
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`on October 26, 2018, a true and correct copy of PETITIONER’S REQUEST
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`FOR REHEARING was served via electronic mail on Counsel for the Patent
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`Owner at the following address of record:
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`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
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`Lauren N. Robinson (Reg. No. 74,404)
`BUNSOW DE MORY LLP
`701 El Camino Real
`Redwood City, CA 94063
`lrobinson@bdiplaw.com
`
`
`Chris J. Coulson Registration No. 61,771
`Bunsow De Mory LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Telephone: 646-502-6973
` Facsimile: 415-426-4744
`ccoulson@bdiplaw.com
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`Craig Y. Allison (Reg. No. 38,067)
`BUNSOW DE MORY LLP
`701 El Camino Real
`Redwood City, CA 94063
`callison@bdiplaw.com
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`Respectfully submitted,
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`/s/ Nicholas Whilt .
`Nicholas Whilt (Reg. No. 72,081)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
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`Attorney for Petitioner
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`9
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