`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`__________________________
`
`Case IPR2018-00952
`Patent No. 9,253,239
`
`__________________________
`
`
`PATENT OWNER BRADIUM TECHNOLOGY’S REPLY TO
`OPPOSITION TO MOTION TO AMEND
`PURSUANT TO 37 C.F.R. § 42.121
`
`
`
`
`
`
`
`
`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`The Claims of Bradium’s Proposed Amendment Are Not Indefinite ........... 1
`
`The Motion To Amend Is Supported .............................................................. 8
`
`A. Amended Claim 20 and New Claim 21 Are Not Broadened ............ 12
`
`IV. The Proposed Claims Are Non-Obvious ...................................................... 12
`
`V.
`
`Conclusion ................................................................................................... 19
`
`
`
`
`
`
`-i-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`Cases
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d1272 (Fed Cir. 2000 ..............................................................................8, 9
`Energizer Holdings, Inc. v. Int'l Trade Comm’n,
`435 F.3d 1366 (Fed. Cir. 2006) .............................................................................. 6
`Graham v. John Deere Co.,
`383 U.S. 1, 36, 86 S. Ct. 684, 16 L. Ed. 2d 545 (1966) ........................................ 16
`In re Arnott,
`19 USPQ2d 1049 (Comm’r Pat. 1991) ................................................................... 8
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) .............................................................................. 1
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...................................................................................... passim
`Sonix Tech. Co., Ltd v. Publications Int’l, Ltd.,
`844 F.3d 1370 (Fed. Cir. 2017) .............................................................................. 7
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
`(1984) .................................................................................................................... 17
`Wellman, Inc. v. Eastman Chem. Co.,
`642 F.3d 1355 (Fed. Cir. 2011) .............................................................................. 7
`Statutes
`35 U.S.C. § 112 ................................................................................................... 5, 12
`35 U.S.C. § 255 .......................................................................................................... 7
`35 U.S.C. § 316(d) ................................................................................................... 12
`
`
`-ii-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
`
`
`
`The Claims of Bradium’s Proposed Amendment Are Not Indefinite
`in a
`The basis of Petitioner’s Opposition appears
`to be rooted
`
`I.
`
`mischaracterization of the law and a gross overstatement of the effect of a minor
`
`typographical errors in elements 20M and 20P of amended claim 20.
`
`Indefiniteness under the Nautilus standard is found when a claim fails to
`
`"inform those skilled in the art about the scope of the invention with reasonable
`
`certainty" and considers factors other than the claim language itself such as the
`
`written description and prosecution history. Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 572 U.S. 898, 910 (2014). The Packard standard, on the other hand, merely
`
`looks to whether the claim “contains words or phrases whose meaning is unclear,”
`
`In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam).
`
`
`
`However, Patent Owner believes it is clear, that, to the extent the Packard
`
`standard and the Nautilus standard differ, it is the Nautilus standard that controls
`
`because it is Supreme Court precedent that issued later in time after Packard.
`
`Tellingly, Petitioner does not even try to apply the Nautilus standard in its analysis
`
`but, instead merely relies on a superficial application for the wrong (Packard)
`
`standard. Opposition at 6-7. This is because, as explained below, under the correct
`
`(Nautilus) standard, the claims at issue are clearly not indefinite.
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`-1-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Patent Owner recognizes and agrees there are minor typographical errors in
`
`claim elements [20M] and [20P]. In particular, that the first recitation of third update
`
`data parcel in element [20M] should in fact be the second update data parcel. And
`
`20P should be the third derivative rather than second. However, these are minor
`
`typographical errors and a POSITA would understand with a high degree of certainty
`
`and clarity that third was intended to be second for element 20M and vice versa for
`
`element 20P for at least several reasons.
`
`The first reason is that a POSITA, under Nautilus, would consult the written
`
`description in order to ascertain the proper meaning of the claim. Such inspection
`
`clearly shows that there is no description at all of displaying the second discrete
`
`portion … using the third update data parcel… as pointed out by Unified’s
`
`Opposition. Rather, that only displaying the second discrete portion … using the
`
`second update data parcel is disclosed for element [20M]. Similarly, that a third
`
`derivative image is used and not a second in element [20P]. Therefore, a POSITA
`
`would reject this recitation as flawed as not supported by the disclosure and
`
`understand third to mean second in this context. EX1019, 6:25-7:1
`
`Moreover, in consulting the disclosure, (the ’239 specification and the ’468
`
`provisional) it is apparent that the specification essentially discloses one image
`
`parcel deployment embodiment, in which the displaying the second discrete
`
`portion … must be done using the second update data parcel and not the third for
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`-2-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`element [20M]. EX1019 at 6:25-7:1. Similarly, that a third derivative image is used
`
`and not a second for element [20P]. Therefore, any other interpretation would read
`
`out the preferred embodiment of the invention and render it inoperable.
`
`Accordingly, a POSITA would reject this recitation as flawed as not supported by
`
`the disclosure and understand third to mean second in this context as the only
`
`operable and described embodiment.
`
`Moreover, a POSITA would also consult the prosecution history in
`
`determining claim scope. From consideration of the amendment to claim 20 and the
`
`associated remarks, it would be clear to POSITA that, throughout the claim, the term
`
`second was frequently being changed to third for legitimate technical reasons in
`
`order to further define and point out the metes and bounds of the invention and the
`
`update of element [20M] made no sense as pointed out by Petitioner. This pattern,
`
`and its underlying intentions and logic of the amendment would be recognized by a
`
`POSITA and would inform his understanding of the claim.
`
`Thus, when viewing the claim in view of this logic and the written description
`
`as articulated above, a POSITA would be informed with reasonable certainty and
`
`clarity the displaying the second discrete portion … is done using the second update
`
`data parcel and not the third. Accordingly, a POSITA would understand what the
`
`claim was intended to mean despite the typographical error on its face.
`
`-3-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Lastly, another factor in determining a POSITA’s understanding is the
`
`treatment and understanding of the claim term afforded by others, including
`
`opposing counsel. Unified’s Opposition brief at 6-7 indicates that they clearly
`
`understood that the displaying of the second discrete portion…is done using the
`
`second update data parcel and not the third by recognizing the other way around
`
`renders the claim inoperable. Similarly, that a third derivative image is used and not
`
`a second for element [20P]. Patent Owner’s expert agrees with the application and
`
`analysis of the above-mentioned factors. Agouris declaration 2059 ¶¶ 44-53.
`
`According to proposed amended claim 20, the second request is renamed the
`
`third request, with a new second request inserted. Corresponding references of the
`
`second request are also incremented, except that the third update data parcel still
`
`references the second user-controlled image viewpoint. The new second request is
`
`for an altered resolution data parcel that references the first user-controlled image
`
`viewpoint. Petitioner called to Patent Owner’s attention that the word “second” was
`
`not cancelled and replaced with “third”. The corrected clauses should read:
`
`“displaying the second third discrete portion on the user
`computing device using the second third update data parcel, the
`step of displaying the second third discrete portion being
`performed after the step of receiving the second third update data
`parcel;” and
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`-4-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`“a series of K1-N derivative images of progressively lower
`image resolution comprises the first derivative image and the
`second third derivative image, …”
`
`It is noted that the “step of displaying” is a reiteration of the initial
`
`“displaying” clause, and therefore the antecedent and subsequent clearly should
`
`match. This also follows from the amendment structure which provides for
`
`“displaying the first discrete portion …”, and “displaying the second discrete
`
`portion … “, each in a fully parallel recitation. Similarly, it is clear that since the
`
`second request was incremented to the third request, the “second derivative image”
`
`in the “wherein” clause should also be incremented to the “third derivative image”.
`
`In accordance with 35 U.S.C. § 112, a clear error in a claim may be legally
`
`interpreted as intended. The Supreme Court, in Nautilus makes clear that a patent is
`
`invalid for indefiniteness only if its claims, read in light of the patent’s specification
`
`and prosecution history, fail to inform, with reasonable certainty, those skilled in the
`
`art about the scope of the invention. In this case, the proper interpretation of the
`
`claims is readily apparent, with reasonable certainty, from the claim language,
`
`written description and amendment history of this claim. Therefore, the claim, when
`
`interpreted in accordance with Nautilus has a scope defined in reasonable certainty
`
`by its terms.
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`-5-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Furthermore, Petitioner’s superficial analysis on pages 2-3 and 6-7 of its
`
`Opposition fail to account for the proper interpretation of the claim, and seek to
`
`compare the “second request” of the original claim with the “second request” of
`
`the amended claim, rather than with the “third request”. Note that there is no third
`
`user-controlled image viewpoint, and the new second request is referenced to the
`
`same first user-controlled image viewpoint as the first request.
`
`Additionally, a mere failure to provide antecedent basis does not render a
`
`claim indefinite. See Energizer Holdings, Inc. v. Int'l Trade Comm’n, 435 F.3d
`
`1366, 1370 (Fed. Cir. 2006). If, "despite the absence of explicit antecedent basis . .
`
`. the scope of a claim would be reasonably ascertainable by those skilled in the art,
`
`then the claim is not indefinite.” Id. at 1370-71 (internal quotation marks
`
`omitted); see also Nautilus, 134 S. Ct. at 2129 (holding that claims are not indefinite
`
`if, "viewed in light of the specification and prosecution history, [they] inform those
`
`skilled in the art about the scope of the invention with reasonable certainty").
`
`Defendants must prove by clear and convincing evidence that the lack of antecedent
`
`basis leaves one of ordinary skill in the art unable to discern the boundaries of the
`
`claim “based on the claim language, the specification, the prosecution history, and
`
`the knowledge in the relevant art.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`
`1355, 1366 (Fed. Cir. 2011) (internal quotation marks omitted).
`
`-6-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Moreover, in Sonix Tech. Co., Ltd v. Publications Int’l, Ltd., 844 F.3d 1370,
`
`1378 (Fed. Cir. 2017) the Court explained, “Section 112 requires that a patent
`
`specification conclude with one or more claims particularly pointing out and
`
`distinctly claiming the subject matter which the applicant regards as his invention.”
`
`(internal quotations omitted). The Court continued, “Even so, the Supreme Court
`
`has recognized that absolute precision is unattainable,” and “[t]he certainty which
`
`the law requires in patents is not greater than is reasonable, having regard to their
`
`subject-matter.” (internal quotations omitted). And, as demonstrated above,
`
`although amended claim 20 is not perfect, perfection is not required, but rather a
`
`reasonable certainty is required, which is satisfied here.
`
`This type of minor typographical error is the kind of error that is properly
`
`corrected by a certificate of correction pursuant to 35 U.S.C. § 255 and MPEP 1481.
`
`For example, so long as the error sought to be corrected is: (1) of a clerical nature,
`
`(2) of a typographical nature, or (3) a mistake of minor character; and the correction
`
`must not involve changes which would: (1) constitute new matter or (2) require
`
`reexamination. See In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991)
`
`specifies the criteria of 35 U.S.C. § 255. This is the case here, as the error sought to
`
`-7-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`be corrected is typographical and of minor character and clearly doesn’t constitute
`
`new matter or require reexamination1.
`
`II. The Motion To Amend Is Supported
`Petitioner surprisingly contends at pages 3-5 of its Opposition that Patent
`
`Owner somehow did not comply with its obligation under 37 C.F.R. § 42.121(b) by
`
`providing citations only to the provisional application. However, quite to the
`
`contrary, it is well established law that when a provisional application is
`
`incorporated by reference it becomes part of the patent specification itself. See, for
`
`example, Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d1272, 1282 (Fed
`
`Cir. 2000) (provisional applications incorporated by reference are “effectively part
`
`of the” specification as though it was “explicitly contained therein.”). See, also,
`
`MPEP § 2163.07(b)2. Thus, to the extent the ’648 provisional provides additional
`
`information above that in the issued ’239 patent, the two disclosures are treated as
`
`cumulative. Merely because the specification of the patent is rewritten from the
`
`earlier provisional does not mean that the claims are not fully supported by one or
`
`both documents, especially given the incorporation by reference.
`
`
`1 Patent Owner agrees to seek such a certificate of correction for elements[20M]
`and [20P] should amended claim 20 be allowed to provide absolute clarity on this
`point.
`2 Further, 37 C.F.R. § 121(b)(2) expressly sanctions reference to an earlier filed
`disclosure that need not be the specification of the issued patent.
`
`-8-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Further, the Declaration of Dr. Peggy Agouris In Support of Bradium
`
`Technologies LLC’s Patent Owner Contingent Motion To Amend Pursuant To 37
`
`C.F.R. § 42.121, EX2055, pp. 20-33, clearly supplies the required statement of
`
`support for the claim amendment in the priority application, U.S. Provisional Patent
`
`Application No. 60/258,468, filed December 27, 2000, EX1019, pp. 52-67.
`
`Accordingly, Patent Owner is fully compliant 37 C.F.R. § 42.121(b), with
`
`Petitioner’s position to the contrary on this point appearing to be frivolous.
`
`However, as noted in the claim support chart, the amended claims are
`
`supported in both the ’648 Provisional Patent Application (EX1019) and the ’239
`
`Patent (EX1001).
`
`Further, based on the remarks in the Opposition, it is believed that Petitioner
`
`misapprehends the methodology disclosed in the supporting specifications. When
`
`creating the quad tree structure of reduced resolution images, one commences with
`
`a full resolution image and subsamples/interpolates to obtain lower resolution
`
`images. These are then communicated in lower resolution prioritized over higher
`
`resolution, so that the user device can begin rendering the image before the high-
`
`resolution image is downloaded. EX1019 p. 4, lines 8-14, and EX1001, p. 9, lines
`
`1-3 make this clear.
`
`Petitioner admits that the original formulation of claim 1 is supported,
`
`stating “the specification and Bradium’s citations to the provisional application
`
`-9-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`only teach displaying a discrete portion using the data parcel that formed it as
`
`recited in original claim 20. EX1027, ¶¶52-54; EX1013, Part 3, 59:7-9; Paper 39,
`
`13; EX1019, 6:25-7:1 (only disclosing “rendering performed asynchronously as
`
`data parcels are received”).” Thus, as properly interpreted the parallel language is
`
`supported in all cases.
`
`The predetermined color or bit depth is supported in EX1001, 6:8-13.
`
`The “factor of two” is supported in EX1001, 11:45-56, where a quad-tree
`
`data structure which divides an area into quadrants (and therefore each side in
`
`half), and thus providing a factor of two difference in resolution, given the same
`
`parcel size. Id., 6:3-41.
`
`Petitioner points out that the provisional patent application EX1019, 8:19-21
`
`teaches away from “determining priority of the additional request such that the
`
`second update data parcel has a greater priority and requested, received, and
`
`displayed before the additional data parcel.” The specification of EX1001 teaches
`
`that lower resolution parcels are requested, received, and rendered before higher
`
`resolution parcels, and thus have higher priority. EX1001, 4:1-3; 6:54-57; 8:37-56;
`
`10:1-3; 10:56-64. According to claim 20, the first request has higher priority than
`
`the second request, which has higher priority than the additional request, and each
`
`has successively higher resolution. (“the second update data parcel has a greater
`
`resolution than the first update data parcel”; “the additional update data parcel has
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`-10-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`a greater resolution than the second update data parcel”). The invention, of course,
`
`prioritizes downloads of lower resolution before higher resolution, but that does
`
`not mean that the higher resolution parcels never are received before lower
`
`resolution parcels, and thus are subject to prioritization, and not strict ordering.
`
`See, EX1001 11:1-16.
`
`III. NEW CLAIM 21 IS A PROPER SUBSTITUTE CLAIM
`
`Petitioner challenged claims 1-25 of the patent. Claim 21 is indeed a
`
`substitute claim with respect to the challenged claims. For example, it is strictly
`
`narrower than claim 20, and responds to grounds for alleged invalidity. 35 U.S.C.
`
`§ 316(d); 37 C.F.R, § 121(a)(2)(i). It is respectfully submitted that, given the patent
`
`challenged had 25 claims, the review of 2 claims per the Motion to Amend is a
`
`reasonable number. The need for the additional claim is clearly enunciated in Patent
`
`Owner’s Contingent Motion to Amend. 37.C.F.R. § 121(a)(3). Further, each of
`
`claims 20 and 21 are traceable to an original claim, albeit the same original claim
`
`20. Note that claim 21 is dependent from claim 20, and therefore is by definition
`
`traceable to original claim 20. See 35 U.S.C. § 112, 4th paragraph.
`
`While there is an administrative rebuttable presumption that a single substitute
`
`claim is sufficient, that presumption is both rebuttable and not based on any factual
`
`analysis by the USPTO, and therefore is entitled to little deference. In this case,
`
`Patent Owner has previously indicated the basis for presenting two proposed
`
`-11-
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`U.S. Patent No. 9,253,239
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`amended claims based on a single remaining claim, and Petitioner has not presented
`
`convincing arguments why the arbitrary presumption must be maintained.
`
`A. Amended Claim 20 and New Claim 21 Are Not Broadened
`
`Petitioner contends in its Opposition at pages 1-3 that the proposed claims 20
`
`and 21 are broader from the original claim 20. Patent Owner notes that Unified’s
`
`position is based in the improper claim construction and indefiniteness argument
`
`addressed by Patent Owner in Section I above. Once the proper Nautilus analysis is
`
`applied, and the proper claim construction used, it becomes clear that amended claim
`
`20 merely adds additional features to original claim 20 and is therefore narrower and
`
`therefore in compliance with 37 C.F.R. § 42.121(a)(2). New claim 21 only adds
`
`additional features and is even more narrow. Further, Patent Owner points out that
`
`Petitioner Unified offers no broadening challenge under
`
`the
`
`claim
`
`construction/indefinite analysis provide by Patent Owner in Section I above.
`
`Accordingly, the Board should find claims 20 and 21 complaint with 37 C.F.R. §
`
`42.121(a)(2).
`
`IV. The Proposed Claims Are Non-Obvious
`As discussed in the Motion to Dismiss, the combination of Reddy (EX1004),
`
`Hornbacker (EX1003), and Rosasco (EX1018) do not render the proposed amended
`
`claims obvious. Further, U.S. Patent No. 6,496,189 to Yaron et al. (“Yaron”)
`
`EX2028 does not remedy the deficiencies of the prior combination of Reddy,
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`-12-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Hornbacker, and Rosasco, because Yaron, either alone or in combination with the
`
`other references, fails to teach or suggest any prioritization which involves both
`
`image parcels involving different resolutions with respect to different viewpoints as
`
`required by the claims.
`
`In particular, proposed amended claim 20 includes a prioritization of requests
`
`for image parcels of different resolution involving two distinct viewpoints. Thus,
`
`the prioritization must consider both different resolution and two viewpoints.
`
`Petitioner admits “a POSITA would have understood, or at least it would have been
`
`rendered obvious to a POSITA, that when a viewpoint is at a particular point on the
`
`map, the browser would first request and download lower resolution for particular
`
`areas, then request higher resolution tiles for portions of the image that can usefully
`
`display the higher resolution data. EX1027, ¶70.” However, this admission compels
`
`a conclusion that Petitioner accepts that the references teach against consideration
`
`of competing priorities for downloading and displaying image parcels with respect
`
`to a different viewpoint. Petitioner further contends: “When the user-controlled
`
`viewpoint is moving, the portions of the image utilizing higher resolution are
`
`changing as the viewpoint moves. In contrast, when the viewpoint is constant, the
`
`portion of the image utilizing the higher resolution image is also constant.”
`
`Patent Owner does not admit that it “would be obvious to [download a further
`
`yet-higher resolution tile within a portion of a mid-resolution tile, in a portion of a
`
`-13-
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`U.S. Patent No. 9,253,239
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`low resolution tile] address user satisfaction issues so that the user is able to view a
`
`lower resolution image until the higher resolution images are available instead of
`
`just having a blank portion of the image during the waiting time. Id.; see also id.,
`
`33:2-6. Mr. Wilson noted that “[t]here is in Reddy significant discussion of user
`
`interface issues which might entail downloading that fourth yellow tile” and “several
`
`spots in Reddy that it might be interpreted to require downloading that tile, mostly
`
`related to efficiency.” Id., 37:11-19, 37:22-38:5. For example, Reddy describes that
`
`“[u]sers must be able to navigate the VRML [(Virtual Reality Modeling Language)]
`
`structures easily and efficiently using a standard VRML browser or a customized
`
`browser that further increases browsing efficiency.” EX1004, ¶7.
`
`A key issue is the prioritization of downloading: should all lowest resolution
`
`tiles be downloaded before any highest resolution tiles? Should all mid-resolution
`
`tiles be downloaded before any highest resolution tiles? If either of these is true,
`
`then the downloading is not merely prioritized, but rather strictly ordered. But,
`
`claims 20-21 require consideration of different viewpoints. If Reddy is interpreted
`
`to teach progressive resolution enhancement of a single viewpoint as Petitioner
`
`contends, it cannot also teach hybrid prioritization based on both level of resolution
`
`and different viewpoint. Therefore, Reddy does not teach or suggest prioritization
`
`of two different viewpoints as required by the claims
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`-14-
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`U.S. Patent No. 9,253,239
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`Additionally, Reddy does not teach a prioritization algorithm or how such
`
`downloading would be organized. Mr. Wilson hypothesizes that Terravision II is
`
`optimized for user satisfaction, but there is no evidence on the record whatsoever
`
`that Terravision II was actually tested with users, so that optimization remains an
`
`unperformed task, and Mr. Wilson projects on the Terravision II researchers, using
`
`hindsight reconstruction from the claims at issue here, a desire to perfect human
`
`factors at the same time that they were trying to achieve a potentially desirable
`
`function in the first instance.
`
`Indeed, it appears that Petitioner relies on impermissible hindsight
`
`reconstruction of the invention to achieve “user satisfaction” based on teachings
`
`from the present invention reflected onto Reddy. This presupposition of the novel
`
`inventive subject matter is clearly obtained in hindsight from the applicant's
`
`inventive disclosure. See, Graham v. John Deere Co., 383 U.S. 1, 36, 86 S. Ct. 684,
`
`16 L. Ed. 2d 545 (1966) (warning against a “temptation to read into the prior art the
`
`teachings of the invention in issue.”); W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`
`721 F.2d 1540, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
`
`(1984) (“[i]t is difficult but necessary that the decision maker forget what he or she
`
`has been taught . . . about the claimed invention and cast the mind back to the time
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`the invention was made (often as here many years), to occupy the mind of one skilled
`
`in the art.”). The hypothetical “user satisfaction” issues presented by Mr. Wilson
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`-15-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`are not themselves elements of the prior art, and are not properly considered in this
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`proceeding.
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`Hornbacker, on the other hand, teaches that a user requests an image view,
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`EX1003, 5:16-21, and after the image is displayed, the user may click on an area of
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`the image to change the resolution of the image. Id., 5:21-24. However, this does
`
`not reflect different viewpoints, but rather different potions of the same viewpoint.
`
`In any case, according to this embodiment, any prioritization is replaced with an
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`express user command, and therefore the elements of claim 20 are not met.
`
`Yaron is alleged to disclose “a system for displaying terrains in a progressive
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`manner. EX1028, 1:11-13, 3:13-24, 4:29-46, 5:1-4, 8:59-9:21, 9:48-54, 11:19-39,
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`12:58-13:7, 13:65-14:9, 14:47-53. Yaron teaches that when a new area is requested
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`for display, first a single low resolution “block” is requested for that area and
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`displayed. Then, subsequent requests for higher resolution blocks are sent, and when
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`those higher resolution blocks are received, they are inserted in the appropriate place
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`within the low-resolution block until the entire image is filled with the high-
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`resolution blocks. Id., 3:40-53.” Yaron, however, discloses that, when the
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`viewpoint is changed, the prior queue is abandoned in view of a new queue based
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`on the new viewpoint. Consequently, Yaron does not teach or suggest any
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`prioritization which involves both image parcels involving different resolutions with
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`respect to the same viewpoint, let alone different viewpoints as required by the
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`-16-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`claims. Indeed, as admitted by Petitioner, “Yaron discloses multiple requests for the
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`same viewpoint such that the second request is a higher resolution, is displayed after
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`the first request, and is overlapping the first request. EX1027, ¶¶77-78.”
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`Petitioner appears to further agree with this assessment. Paper 42, pp. 19-20.
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`Furthermore, as discussed in the Petition (pp. 67-71), a POSITA would have
`
`understood that for another viewpoint a similar prioritization would occur with
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`respect to the lower-resolution requests and the higher resolution requests. Id.
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`Therefore, in addition to prioritizing multiple overlapping images requested from a
`
`single viewpoint (i.e., the claimed first request (lower resolution tiles) and second
`
`request (higher resolution tiles)). Reddy also describes a prioritization for images
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`requested from a second viewpoint (i.e., the claimed third request). Id. “A POSITA
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`would have understood that for another viewpoint a similar prioritization would
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`occur with respect to the lower-resolution requests and the higher resolution
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`requests. EX1027, ¶85.” Thus, Petitioner admits that according to the teachings of
`
`Reddy and its combination with Yaron, Hornbacker and Rosasco, each viewpoint
`
`represents a different basis for prioritization, and that the prioritization itself only
`
`includes image parcels relating to the same viewpoint, in contrast to the present
`
`claims which require image prioritization based on at least two viewpoints. When
`
`the viewpoint according to the prior art is changed, a new prioritization of image
`
`parcels having different resolutions is performed, and at no time do these references,
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`-17-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`alone or in combination, implement a common prioritization scheme where image
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`parcels are both of different resolutions from the same viewpoint, and from different
`
`viewpoints. Therefore, the proposed combination relied on must fail as
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`characterized by Petitioner (adverse admission).
`
`Petitioner also cites Yaron EX1028, 3:44-45, for the statement “When the
`
`viewpoint is changed, such as with the claimed third request, Yaron teaches that “the
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`blocks sent first are for the new viewpoint, and only afterwards are blocks sent for
`
`the old viewpoint.” Id., 3:44-45. Thus, in addition to prioritizing multiple
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`overlapping images requested from a single viewpoint (i.e., the claimed first and
`
`second requests), Yaron also describes a higher priority for images requested from
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`a second viewpoint (i.e., the claimed third request) over the first viewpoint (i.e., the
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`first and second requests). EX1027, ¶86.
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`However, the present claims require that “determining priority of the first,
`
`request and the second request, and the third requests such that the first update data
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`parcel has a greater priority. According to Yaron, when the viewpoint changes, the
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`third request from the second viewpoint has a higher priority than the first request
`
`from the first viewpoint. That is, Yaron clearly states “Thus, when the viewpoint
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`changes, the blocks sent first are for the new viewpoint, and only afterwards are
`
`blocks sent for the old viewpoint.” EX1029 3:44-45. Yaron thus teaches the
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`opposite of the presently claimed invention.
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`-18-
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`Reply to Opposition to Motion to Amend, IPR2018-00952
`U.S. Patent No. 9,253,239
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`Thus, Petitioner admits that Yaron teaches that the third update data parcel is
`
`g
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