UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
`Petitioner,
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`v.
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`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
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`
`PTAB Case No. IPR2017-01616
`Patent No. 9,641,644 B2
`
`
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`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,641,644 B2
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`EXHIBIT LIST ....................................................................................................... iii
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R.§42.8(B) .............................. 1
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
`A. GROUND FOR STANDING ............................................................... 3
`B.
`IDENTIFICATION OF CHALLENGE ............................................... 3
`IV. OVERVIEW OF THE ’644 PATENT ........................................................... 5
`A.
`PRIORITY DATE OF THE ’644 PATENT ........................................ 5
`B.
`SUMMARY OF THE ’644 PATENT .................................................. 5
`C.
`THE EXAMINER ERRED BY ALLOWING THE ’644
`PATENT DESPITE CLAIM ELEMENTS TAUGHT BY THE
`REFERENCES CITED IN THIS PETITION ...................................... 8
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 11
`D.
`PROPOSED CLAIM CONSTRUCTION .......................................... 12
`E.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’644 PATENT IS UNPATENTABLE ................... 13
`A.
`THE CITED REFERENCES ARE PRIOR ART .............................. 13
`B. GROUND 1: CLAIMS 1-65 ARE UNPATENTABLE UNDER
`35 U.S.C.§103(A) OVER REDDY AND HORNBACKER ............. 14
`1.
`REDDY AND HORNBACKER SHOW THAT THE
`PURPORTED SOLUTIONS CLAIMED BY THE ’644
`PATENT WERE NOT NOVEL IN THE TECHNICAL
`FIELD ...................................................................................... 15
`a.
`REDDY .......................................................................... 15
`b.
`HORNBACKER ............................................................ 19
`A POSITA WOULD HAVE BEEN MOTIVATED TO
`COMBINE REDDY AND HORNBACKER .......................... 20
`a.
`CLAIM 1 ....................................................................... 24
`b.
`CLAIM 23 ..................................................................... 42
`c.
`CLAIM 44 ..................................................................... 47
`
`V.
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`2.
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`-i-
`
`

`

`TABLE OF CONTENTS
`(continued)
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`Page
`
`
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`DEPENDENT CLAIMS 2-22, 24-43, AND 45-65 ....... 50
`d.
`C. NO SECONDARY INDICIA OF NON-OBVIOUSNESS ............... 66
`VI. CONCLUSION ............................................................................................. 67
`
`-ii-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`EXHIBIT LIST
`
`Ex.1001
`
`U.S. Patent No. 9,641,644 B2 to Levanon et al. (“the ’644 Patent”)
`
`Ex.1002
`
`U.S. Patent No. 9,253,239 B2 to Levanon et al. (“the ’239 Patent”)
`
`Ex.1003
`
`Ex.1004
`
`PCT Publication No. WO 99/41675 to Cecil V. Hornbacker, III
`(“Hornbacker”)
`
`Reddy et al., “TerraVision II: Visualizing Massive Terrain Databases
`in VRML,” IEEE Computer Graphics and Applications March/April
`1999, pp. 30-38 (“Reddy” with added paragraph numbers by
`Petitioner for ease of reference in the Petition)
`
`Ex.1005
`
`Declaration of Prof. William R. Michalson (“Michalson Decl.”)
`
`Ex.1006
`
`EP1070290 to Cecil V. Hornbacker, III
`
`Ex.1007
`
`Printout of IEEE Explore citations to Reddy et al. (Ex.1004)
`
`Ex.1008
`
`Printout of Google Scholar citations to Reddy et al. (Ex.1004)
`
`Ex.1009
`
`Cover page and authenticating declaration of Reddy et al. (Ex.1004)
`from British Library
`
`Ex.1010
`
`Cover page of Reddy et al. (Ex.1004) from Linda Hall Library
`
`Ex.1011
`
`B. Fuller and I. Richer, The MAGIC Project: From Vision to Reality,
`IEEE Network May/June 1996, pp. 15-25
`
`Ex.1012
`
`U.S. Patent No. 7,908,343 B2 to Levanon et al. (“the ’343 Patent”)
`
`Ex.1013
`
`U.S. Patent No. 8,924, 506 B2 to Levanon et al. (“the ’506 Patent”)
`
`Ex.1014
`
`Visualization System for SRI’s Digital Earth Proposal, dated April 16,
`1999, available at http://www.ai.sri.com/digitalearth/
`proposal/visualization-system.html
`
`Ex.1015
`
`Isaac Levanon Linkedin profile
`
`Ex.1016-1017
`
`Not Used in This Proceeding
`
`-iii-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`Deposition Transcript of Peggy Agouris, dated January 13, 2017
`
`Ex.1018
`
`Ex.1019
`
`Deposition Transcript of Isaac Levanon, dated January 18, 2017
`
`Ex.1020
`
`Fujitsu Technical Reference Guide, Stylistic 2300 (1998)
`
`Ex.1021
`
`Bradium Provisional Application No. 60/258465
`
`Ex.1022
`
`The Universal Grid System, NGA Office of GEOINT Sciences,
`March 2007
`
`Ex.1023 Wolford, B., FXT1: 3dfx Texture Compression, Last Updated
`September 14, 1999, available at http://web.archive.org/web/
`20000114134331/http://www.combatsim.com/htm/sept99/3dfx-
`tc1.htm
`
`Ex.1024
`
`U.S. Patent Publication No. 2008/0294332 A1 to Levanon et al.
`
`Ex.1025
`
`U.S. Patent No. 7,561,156 B2 to Levanon et al.
`
`Ex.1026 May 10, 2017 letter from M. Zachary to M. Bernstein
`
`Ex.1027-1029
`
`Not Used in This Proceeding
`
`Ex.1030
`
`Barclay, T. et al., Microsoft TerraServer: A Spatial Data Warehouse,
`Microsoft Research, June 1999, Revised February 2000.
`
`Ex. 1031
`
`Intel Microprocessor Quick Reference Guide - Product Family,
`available at http://www.intel.com/pressroom/kits/quickreffam.htm
`
`Ex. 1032 Barclay, T. et al., Microsoft TerraServer: A Spatial Data Warehouse,
`Microsoft Research, June 1999.
`
`Ex. 1033 Microsoft Terraserver Abstract, Cornell University Library, Submitted
`September 5, 1998.
`
`Ex. 1034 Barclay, T. et al., The Microsoft TerraServer, Microsoft Research,
`June 1998.
`
`
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`
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`-iv-
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`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`Ex. 1035 Barclay, T. et al., Microsoft TerraServer: A Spatial Data Warehouse,
`ACM, 2000.
`
`Ex. 1036 Barclay, T. et al., Microsoft TerraServer: SQL Server 7.0, Microsoft,
`June 1998, available at https://msdn.microsoft.com/en-
`us/library/aa226316(v=sql.70).aspx.
`
`Ex. 1037 Microsoft, Partners Announce Microsoft TerraServer – Global Atlas
`Is World’s Largest Database on the Web, Microsoft News Center,
`posted June 24, 1998, available at
`https://news.microsoft.com/1998/06/24/microsoft-partners-announce-
`microsoft-terraserver-global-atlas-is-worlds-largest-database-on-the-
`web/#bMPkijPvjZ8sDgPw.97.
`
`Ex. 1038
`
`Ex. 1039
`
`Ex. 1040
`
`Ex. 1041
`
`Ex. 1042
`
`
`
`
`
`TerraServer Image Loading and Cutting Process, available at
`https://web.archive.org/web/20000914164508/http://terraserver.micro
`soft.com/qa_load_graph2.asp.
`
`TerraServer Story, TerraServer Site Story, available at https://web-
`beta.archive.org/web/19991129051006/http://terraserver.microsoft.co
`m/terra_story_images.asp.
`
`TerraServer Image Loading and Cutting Process, TerraServer Site
`Story, available at https://web-
`beta.archive.org/web/20000309231237/http://terraserver.microsoft.co
`m/terra_story_load.asp.
`
`TerraServer Scale, TerraServer Site Story, available at https://web-
`beta.archive.org/web/20000226014211/http://terraserver.microsoft.co
`m/terra_story_scale.asp.
`
`TerraServer Interface, TerraServer Site Story, available at
`https://web.archive.org/web/20000707214318/http://terraserver.micro
`soft.com:80/terra_story_interface.asp.
`
`-v-
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`
`
`

`

`I.
`
`INTRODUCTION
`
`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`
`Pursuant to 35 U.S.C.§311 and 37 C.F.R. § 42.100, Microsoft Corporation
`
`(“Microsoft” or “Petitioner”) petitions for inter partes review (IPR) of claims 1-65
`
`of U.S. Patent No.9,641,644 (“the ’644 Patent,” Ex. 1001), owned by Bradium
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`5
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`Technologies LLC (“Bradium” or “Patent Owner”).
`
`The ’644 Patent broadly claims dividing large sets of imagery (e.g.,
`
`geographic imagery) into “image parcels” at varying levels of detail to allow users
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`to browse such imagery online. The cited Reddy and Hornbacker references show
`
`how this concept was well-known before the priority date of the ’644 Patent.
`
`10
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`Therefore, claims 1-65 are unpatentable under pre-AIA 35 U.S.C.§103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R.§42.8(B)
`REAL PARTY IN INTEREST: Petitioner is the only real party in interest,
`
`and there are no other real parties in interest under 35 U.S.C.§312(a)(2) and 37
`
`C.F.R.§42.8(b)(1).
`
`15
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`RELATED MATTERS: Four patents related to the ’644 Patent, U.S. Patent
`
`Nos. 9,253,239 B2 (“the ’239 Patent”), 7,139,794 B2 (“the ’794 Patent”),
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`7,908,343 B2 (“the ’343 Patent”), and 8,924,506 B2 (“the ’506 Patent”), are being
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`asserted against Petitioner in an ongoing patent infringement lawsuit brought by
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`Patent Owner in Bradium Techs. v. Microsoft, 1:15-cv-00031-RGA, filed January
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`20
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`9, 2015. Bradium has accused Microsoft of infringing the ’644 Patent (Ex. 1026)
`
`-1-
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`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`but has not yet served Microsoft with a complaint alleging infringement of the ’644
`
`Patent. Therefore, the 1-year time bar of 35 U.S.C. § 315(b) does not apply to this
`
`Petition.
`
`Petitioner has previously filed IPR petitions challenging the four related
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`5
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`patents in suit:
`
`• ’794 Patent: IPR2015-01432, instituted Dec. 23, 2015, Final Written
`
`Decision issued Dec. 21, 2017
`
`• ’343 Patent:
`
`o IPR2015-01434, institution denied Dec. 23, 2015
`
`10
`
`o IPR2016-00448, instituted July 25, 2016
`
`• ’506 Patent:
`
`o IPR2015-01435, institution denied Dec. 23, 2015
`
`o IPR2016-00449, instituted July 27, 2016
`
`• ’239 Patent: IPR2016-01897, instituted April 5, 2017
`
`15
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`NOTICE OF COUNSEL AND SERVICE INFORMATION: Pursuant to 37
`
`C.F.R.§§42.8(b)(3), 42.8(b)(4) and 42.10(a), Petitioner appoints Chun M. Ng (Reg.
`
`No. 36,878) as its lead counsel, Matthew C. Bernstein (pro hac vice), Patrick J.
`
`McKeever (Reg. No.66,019), Vinay P. Sathe (Reg. No.55,595), Evan S. Day
`
`(Reg. No. 75,992), and Miguel J. Bombach (Reg. No. 68,636) as its back-up
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`20
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`counsel. Lead counsel is at the address of 1201 Third Avenue, Suite 4900, Seattle,
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`-2-
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`

`

`WA 98101 and contact number of 206-359-6400. All back-up counsel are at the
`
`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`
`mailing address of Perkins Coie LLP, 11988 El Camino Real, Suite 350, San
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`Diego, CA 92130, contact numbers of 858-720-5700 (phone) and 858-720-5799
`
`(fax). All counsel for Petitioner may be reached at the following email for service
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`5
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`and communications:
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`PerkinsServiceBradiumIPR@perkinscoie.com.
`
`Pursuant to 37 C.F.R.§42.10(b), a Power of Attorney is concurrently filed.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`This Petition complies with all statutory requirements and requirements
`
`10
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`under 37 C.F.R.§§42.104, 42.105 and 42.15 and thus should be accorded a filing
`
`date as of the date of filing of this Petition pursuant to 37 C.F.R.§42.106.
`
`A. GROUND FOR STANDING
`Pursuant to 37 C.F.R.§42.104(a), Petitioner certifies that the ’644 Patent is
`
`available for IPR and that Petitioner is not barred or estopped from requesting IPR
`
`15
`
`challenging claims of the ’644 Patent.
`
`IDENTIFICATION OF CHALLENGE
`
`B.
`Claims Challenged: Pursuant to 37 C.F.R.§§42.104(b) and 42.22, Petitioner
`
`requests that the Board institute an IPR trial on claims 1-65 of the ’644 Patent, and
`
`cancel all of these claims.
`
`-3-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`The Prior Art: The prior art references relied upon are Reddy (Ex. 1004) and
`
`Hornbacker (Ex. 1003) and are discussed in this Petition and the Declaration of
`
`Prof. William Michalson (Ex. 1005).
`
`Supporting Evidence Relied Upon For The Challenge: The evidence
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`5
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`includes the Michalson Declaration (Ex. 1005) and other supporting evidence in
`
`the Exhibit List. In addition, Petitioner intends to seek leave from the Board to
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`depose Israeli co-inventor Yonatan Lavi through the Hague Convention.
`
`Statutory Ground(s) Of Challenge And Legal Principles: Pursuant to 37
`
`C.F.R.§42.104 (b)(2), the review of patentability of claims 1-65 is governed by
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`10
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`pre-AIA 35 U.S.C.§§102 and 103. Further, statutory provisions of 35 U.S.C.§§311
`
`to 319 and 325(d) govern this IPR.
`
`Claim Construction: The ’644 Patent is an unexpired patent, and each claim
`
`shall be given “its broadest reasonable interpretation [BRI] in light of the
`
`specification of the patent in which it appears” to a person of ordinary skill in the
`
`15
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`art (POSITA). 37 C.F.R.§42.100(b); Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131,
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`2142-46 (2016).
`
`How Claims Are Unpatentable Under Statutory Grounds: Pursuant to 37
`
`C.F.R.§42.104 (b)(4), Section V explains how claims 1-65 are unpatentable and
`
`specifies where each claim element is found in the cited prior art.
`
`-4-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`
`IV. OVERVIEW OF THE ’644 PATENT
`A.
`PRIORITY DATE OF THE ’644 PATENT
`The ’644 Patent was granted on May 2, 2017 from non-provisional
`
`Application No.14/970,526 filed December 15, 2015 and makes priority claims to
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`5
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`a chain of prior applications, including six earliest provisional applications filed
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`December 27, 2000. Ex. 1001, cover pages 1 and 2. Therefore, the earliest
`
`priority date of the ’644 Patent is no earlier than December 27, 2000.
`
`SUMMARY OF THE ’644 PATENT
`
`B.
`The ’644 Patent discloses methods and systems for servers to respond to
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`10
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`requests for image data received from a client computing device over network
`
`communication channels. Ex. 1001 at Abstract, 3:59-4:60; Ex. 1005, ¶¶98-106.
`
`Such requests are based on user-controlled image viewpoints. The user navigation
`
`commands are used to select certain parts of an image in a scene, resulting in
`
`requests to retrieve and display updated image data on the user’s computing device.
`
`15
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`Id. at Abstract, 1:42-47, 1:60-65, 3:64-4:10, 5:42-6:36, 7:63-8:5.
`
`The “Background” of the ’644 Patent acknowledges the “well recognized
`
`problem” of reducing the latency for transmitting full resolution images over the
`
`Internet, so such images can be received at a user computing device on an “as
`
`needed” basis. The ’644 Patent describes “complex images” such as “geographic,
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`20
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`topographic, and other highly detailed maps” as examples, but states that the
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`-5-
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`

`

`“present invention is equally applicable to the efficient communications and
`
`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`
`display of other high resolution information.” Ex. 1001 at 1:50-2:1; 5:42-62, 6:6-
`
`20, 7:9-22, and 12:13-20.
`
`To address these perceived issues, the ’644 Patent discloses “an efficient
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`5
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`system and methods of optimally presenting image data on client systems with
`
`potentially limited processing performance, resources, and communications
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`bandwidth.” Id. at 3:59-63. Fig. 2 shows a preferred embodiment comprising a
`
`network image server system 30. Id., 6:6-59.
`
`
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`10
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`The network image server system 30 stores a combination of source image
`
`data 32 and source overlay data 34. Id., 6:6-7:8. The source image data 32 is
`
`typically high-resolution bitmap raster map or satellite imagery of geographic
`
`regions. Id., 6:9-12. Overlay data is preferably a “discrete,” “resolution-
`
`independent” data file, which may contain annotations such as street and landmark
`
`15
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`names, 2D and 3D objects, icons, decals, line segments, or other characters and
`
`-6-
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`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`graphics. Id., 6:12-20; 7:18-21. Such overlay data may be stored in a previously
`
`known, open-source format such as Geography Markup Language (GML). Id.,
`
`7:9-23.
`
`In the preferred embodiment, “image data parcels are stored in conventional
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`5
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`quad-tree data structures, where tree nodes of depth D correspond to the stored
`
`image parcels of resolution KD.” Id., 7:40-42. Such quad-tree structures are used
`
`to locate image parcels of appropriate resolution. Id., 10:4-23.
`
`The ’644 patent discusses the client system software and architecture and the
`
`formats of data sent over the network in response to client requests. However, it
`
`10
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`does not describe in detail the architecture of the network server 12, other than
`
`mentioning that the server “operat[es] as a data store and server of image data” and
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`“is responsive to requests received through a communications network, such as the
`
`Internet 14 generally…” and that the client relies on “HTML-based interactions
`
`with the server.” Id., 5:43-48, 7:29-31. As Prof. Michalson explains, a POSITA
`
`15
`
`would therefore understand that the server system described by the ’644 patent
`
`uses conventional network server architecture that would be known to a POSITA
`
`in connection with conventional Internet protocols. Ex. 1005, ¶¶171-172.
`
`-7-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`C. THE EXAMINER ERRED BY ALLOWING THE ’644 PATENT
`DESPITE CLAIM ELEMENTS TAUGHT BY THE REFERENCES CITED
`IN THIS PETITION
`
`The challenged claims of the ’644 Patent are comparable to the claims of
`
`5
`
`the ’239 Patent on which the Board has already instituted IPR, with the primary
`
`difference that the claims of the ’644 Patent are directed to a server, whereas the
`
`claims of the ’239 Patent are directed to a client device in the same client-server
`
`interaction.
`
`Nevertheless, the Examiner allowed the ’644 Patent without substantively
`
`10
`
`discussing any prior art references. In a July 27, 2016 Notice of Allowance, the
`
`Examiner cited the following claim language as the “primary reasons [sic] for
`
`allowance”:
`
`15
`
`20
`
`Process the source image data to obtain a series of K1-N
`derivative images of progressively lower image
`resolution, the series of K1-N derivative image
`comprising the first derivative image and the second
`derivative image, wherein series image K0 of the series
`of KN derivative images is subdivided into a regular
`array wherein each resulting image parcel of the array
`has a predetermined pixel resolution and a predetermined
`color or bit per pixel depth, resolution of the series K1-N
`of derivative images being related to resolution of the
`source image data or predecessor image in the series by a
`
`-8-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`
`factor of two, and the array subdivision being related by a
`factor of two.
`
`The claim element language cited by the Examiner is virtually identical to
`
`claim language in the ’239 Patent. See Ex. 1002 (’239 Patent) at 13:5-17. In its
`
`5
`
`decision to institute IPR of the ’239 Patent in IPR2016-01897, the Board stated
`
`that it was “persuaded” that Reddy in view of Hornbacker taught the nearly
`
`identical claim language in the ’239 Patent. IPR2016-01987, Paper 17 at 14-16
`
`(April 5, 2017). Similar language also appears in the claims of the ’343 and ’506
`
`Patents, for which the Board also instituted IPRs based on Reddy and Hornbacker.
`
`10
`
`Ex. 1012 (’343 Patent) at 11:35-45; Ex. 1013 (’506 Patent) at 12:40-52; IPR2016-
`
`00448, Paper 9 at 26-29 (PTAB July 25, 2016); IPR2016-00449, Paper 9 at 26-29
`
`(PTAB July 27, 2016).
`
`Tellingly, in the five opportunities (three Patent Owner Preliminary
`
`Responses and two Patent Owner Responses) that Bradium has had to argue for the
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`15
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`patentability of claims containing similar claim language over Reddy and
`
`Hornbacker, Bradium never once disputed that Reddy taught this claim language.
`
`See generally IPR2016-00448, Papers 8 and 20; IPR2016-00449, Papers 8 and 16;
`
`IPR2016-01897, Paper 9. Therefore, the prosecution history shows that the
`
`Examiner erred by allowing claims based on claim elements which are
`
`20
`
`indisputably taught by the prior art in this Petition.
`
`-9-
`
`

`

`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
`
`While Microsoft expects Bradium to argue that the Board should exercise its
`
`discretion to decline to review this Petition under 35 U.S.C. §325(d) because
`
`Bradium cited Reddy and Hornbacker in an Information Disclosure Statement, the
`
`Board should reject this argument. There is no specific discussion of Reddy or
`
`5
`
`Hornbacker reflected in the prosecution history, and the Board has instituted
`
`review numerous times in similar situations where a highly relevant reference was
`
`cited but not substantively discussed. See, e.g. Tandus Flooring, Inc. v. Interface,
`
`Inc., IPR2013-00527, Paper 12 at 3-4 (Feb. 14, 2014) (“The Board is not required
`
`by statute to reject a petition based upon previous consideration by the Office of
`
`10
`
`certain arguments or prior art”); Baker Hughes, Inc. v. Liquidpower Specialty
`
`Products, Inc., IPR2016-01901, Paper 10 at 10-12 (April 17, 2017) (granting
`
`institution even though primary prior art reference was discussed during
`
`prosecution where Petitioner’s arguments were distinct and Petitioner’s expert
`
`declaration was new evidence); American Pharmaceuticals Ltd. v. Janssen
`
`15
`
`Oncology, Inc., IPR2016-00286, Paper 14 at 17-18 (May 31, 2016) (granting
`
`institution based on prior art references considered during prosecution). Even if
`
`the Examiner had somehow found that the claim elements cited as reasons for
`
`allowance were novel over Reddy, for reasons not reflected in the prosecution
`
`history, the Board can and should review such decisions to correct errors in the
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`20
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`patent process. See Skky, inc. v. Mindgeek SARL et al., No. 2016-2018, slip op. at
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`11 (Fed. Cir. June 7, 2017) (no authority for “proposition that once an examiner
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`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
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`concludes that claims are patentable over a reference, that reference may no longer
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`be considered further in determining a claim’s validity”).
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`Moreover, the Board’s previous findings that such claim elements were
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`5
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`obvious over Reddy create a risk of conflicting statements from the Patent Office
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`about whether such claimed features are novel features which Bradium is entitled
`
`to exclude others from practicing or simply a known feature in the prior art.
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`Because this Petition shows that the claim language relied on by the Examiner, and
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`all elements of the challenged claims, were taught by the prior art, institution of
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`10
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`review is appropriate.
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`D. LEVEL OF ORDINARY SKILL IN THE ART
`As Prof. Michalson explains, based on the pertinent technical field and
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`problems described in the ’644 Patent, particularly applications specific to
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`Geographic Information Systems (“GIS”), a POSITA for the claimed technology
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`15
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`would have a Master of Science or equivalent degree in electrical engineering or
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`computer science, or alternatively a Bachelor of Science or equivalent degree in
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`electrical engineering or computer science, with at least five years of experience in
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`a field related to GIS or the transmission of digital image data over a computer
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`network. Ex. 1005, ¶¶30-38. Prof. Michalson’s conclusions that the claims of
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`20
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`the ’644 Patent are obvious would not change under other definitions of the level
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`of ordinary skill in the art that have been proposed by Bradium in related
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`proceedings. Id., ¶¶39-40.
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`PROPOSED CLAIM CONSTRUCTION
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`E.
`Petitioner proposes constructions for certain claim terms pursuant to the BRI
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`5
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`standard only to comply with 37 C.F.R.§§42.100(b) and 42.104(b)(3), and solely
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`for purposes of this Petition. Thus, the proposed constructions do not necessarily
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`reflect appropriate claim constructions in litigation and other proceedings where a
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`different claim construction standard applies.
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`“Mobile Device” in claims 2, 23, and 45:
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`In its Decision instituting IPR of the ’239 Patent, the Board rejected
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`Bradium’s proposed limiting construction of a “mobile device” and determined
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`that the term needed no construction. IPR2016-01897, Paper 17 at 9-10 (April 5,
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`2017). Petitioner proposes that the same result (no construction necessary) is also
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`appropriate here, or alternatively that the term be construed as “a device which is
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`15
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`portable.” As the Board previously noted, “the word ‘mobile’ in the term ‘mobile
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`device’ suggests a device that is portable.” Id. at 9. The specification of the ’644
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`Patent does not indicate that the various examples of a “small client” (see, e.g., Ex.
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`1001 at 3:1-6) are intended to define or limit a “mobile device,” nor is it
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`appropriate under the BRI to limit the construction of a term based solely on
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`20
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`examples. Ex. 1005, ¶¶113-115.
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`IPR Petition of U.S. Patent No. 9,641,644 B2
`PTAB Case No. IPR2017-01616
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`All remaining claim terms: The proposed construction of all remaining
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`claim terms under BRI is their plain and ordinary meaning. Ex. 1005, ¶116.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’644 PATENT IS UNPATENTABLE
`A. THE CITED REFERENCES ARE PRIOR ART
`Reddy (Ex. 1004) was published in the March/April 1999 issue of IEEE
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`5
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`Computer Graphics and Applications and thus is a self-authenticating periodical on
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`its face and is prior art under at least 35 U.S.C.§102(b). See, e.g. Ericsson v.
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`Intellectual Ventures, IPR2014-00527, Paper 41 at 10-13 (PTAB May 18, 2015)
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`10
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`(taking Official Notice of reliability of IEEE publications). The Board previously
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`determined that Reddy was prior art to the related ’343 and ’506 Patents in
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`IPR2016-00448, Paper 9 at 12-14, and IPR2016-00449, Paper 9 at 12-13. Prof.
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`Michalson explains that a POSITA would rely on the IEEE publication markings
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`contained in Reddy as reliable evidence that Reddy was published in 1999. Ex.
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`15
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`1005, ¶109. Reddy was also cited by several publications prior to the priority date
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`of the ’644 Patent. Exs.1007, 1008.
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`Hornbacker (Ex. 1003) is a PCT Publication published on August 19, 1999,
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`and thus is prior art under at least 35 U.S.C.§102(b).
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`B. GROUND 1: CLAIMS 1-65 ARE UNPATENTABLE UNDER 35
`U.S.C.§103(A) OVER REDDY AND HORNBACKER
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`In each of claims 1-65, the claimed subject matter as a whole is rendered
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`obvious by Reddy in view of Hornbacker.
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`5
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`Reddy, the primary reference, teaches or suggests all elements of these
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`claims regarding online browsing of large-scale geographic imagery in 2D or 3D
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`by dividing images into tiles at varying resolutions. Reddy, however, does not
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`specify explicitly how requests for image tiles would identify the locations and
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`zoom levels of image tiles. Hornbacker, however, teaches specific methods by
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`which a POSITA could implement the teachings of Reddy to identify specific
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`needed tiles.
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`As discussed further below, a POSITA would have combined the teachings
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`in Reddy and Hornbacker in the manner claimed by claims 1-65 based on
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`underlying trends and motivations in the art, as well as specific teachings in both
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`15
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`references. For example, as Prof. Michalson explains, the concept of an “image
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`pyramid,” the hierarchy of tiles of derivative images varying between levels by
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`powers of two as claimed by the ’644 Patent, was well-known in the art for
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`decades and applied in online systems such as Microsoft’s TerraServer prior to the
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`earliest asserted priority date of the ’644 Patent. Ex. 1005, ¶¶56-60. Simply put,
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`the ’644 Patent’s inventors did not invent image pyramids, online or otherwise.
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`Prof. Michalson further explains that the ‘644 Patent relies on already well-known
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`technology in the fields of network communications, computer graphics, and GIS.
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`Ex. 1005, ¶¶ 41-97.
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`5
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`1.
`REDDY AND HORNBACKER SHOW THAT THE
`PURPORTED SOLUTIONS CLAIMED BY THE ’644 PATENT WERE
`NOT NOVEL IN THE TECHNICAL FIELD
`a.
`Reddy, by SRI International researchers, describes methods for viewing
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`REDDY
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`large amounts of geographic data over a network, such as the TerraVision II
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`software system. Previous SRI work had designed a TerraVision software
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`10
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`program for three-dimensional visualization of terrain (including aerial imagery)
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`over a high-speed ATM network, along with supporting server architecture. Ex.
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`1004, ¶38; Ex. 1005, ¶¶122-123. Reddy teaches that by 1999, the authors had
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`developed methods to improve on the original TerraVision and supporting servers
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`by (1) allowing the user to browse online geographic information in the standard
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`15
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`Virtual Reality Markup Language (VRML), therefore allowing compatibility with
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`data from other sources; and (2) enabling use of a standard personal computer,
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`including a laptop, to access data over the Web rather than a specialized high-
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`speed network. Ex. 1004, ¶¶9, 31, 39, 48; Ex. 1005, ¶¶124, 133-141. Such
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`teachings could be implemented, for example, in the TerraVision II program
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`20
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`capable of operating on a “PC connected to the Internet,” or on a plug-in to enable
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`a standard browser to access the same data. According to Reddy, the ability to use
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`a diverse range of devices and networks of varying capabilities enables its
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`teachings to be used in scenarios such as “distributed, time-critical conditions,”
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`including military mission planning, battle damage assessment, and emergency
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`relief efforts. Ex. 1004, ¶48.
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`5
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`Reddy teaches that the online VRML information accessed by the browser
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`may include information such as digital elevation information, aerial, satellite, or
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`map imagery, and features such as place names, buildings, or roads. Id., ¶¶2, 24-
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`26. Such VRML browsing methods enable a user to visualize large geographic
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`databases in 3D from a simulated perspective. For example, a user can zoom in on
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`10
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`a 3D model of earth viewed from space and “fly” all the way down to see a
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`particular building, with terrain and map imagery data appearing at increasingly
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`higher resolutions as the user progressively approaches a point on the map. Id., ¶3.
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`Reddy enables this resolution-dependent viewing by using a quad-tree
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`structure in which one tile or node at a given resolution or level of detail branches
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`15
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`off to four (2x2) tiles or nodes at the next higher level. The quad-tree structure
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`links several data types, including elevation data, terrain imagery and other
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`features that may be overlaid on a map. Id., ¶¶9-26 and Fig. 3. Image tiles are
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`organized into a “pyramid,” a multiresolution hierarchy of image tiles in which (1)
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`each tile has the same pixel dimensions, (2) a tile at a given level of the pyramid
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`20
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`maps onto four tiles at the next higher level, and (3) the resolution (area covered by
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`one pixel) varies by a factor of two between subsequent levels. Id., ¶¶14-17. The
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`resolution levels in the hierarchy facilitate a 3D perspective view by allowing
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`higher resolution tiles to be selectively retrieved for locations closer to the
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`viewpoint. For example, Fig. 1(a) depicts the image pyramid, while Fig. 1(b)
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`5
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`shows the tiles of differing resolutions used to form a view when the user is
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`positioned in the lower-right hand corner of the map (id., ¶15-17):
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`
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`When the viewpoint approaches a terrain region, the quad-tree structure is
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`used to load and display more detail “progressively… in a coarse-to-fine fashion,”
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`allowing the user to “interact with the scene while higher resolution imagery and
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`elevation loads.” Id., ¶¶21, 44. The tile pyramid structure in Reddy’s Fig. 1(a) is
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`similar to Fig. 2 of the ’644 Patent:
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`IPR Petition of U.S. Patent No. 9,641,644 B2
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`Accordingly, Reddy illustrates that the industry recognized the challenges in
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`disseminating “massive terrain data sets” and “many millions of polygons and
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`many gigabytes of imagery” of 3D maps and spatial data over the Web in response
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`5
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`to a user request by web browser. Reddy teaches the use of a web browser to
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`navigate VRML structures easily and efficiently, and further acknowledges that the
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`time required to download and render such a mode