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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC
`Patent Owner
`_________________________
`
`IPR2018-00952
`U.S. Patent 9,253,239
`_________________________
`
`
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S REPLY TO
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`CONTINGENT MOTION TO AMEND
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`TABLE OF CONTENTS
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`IPR2018-00952
`U.S. 9,253,239
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`
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`I.
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`INSUFFICIENT WRITTEN DESCRIPTION SUPPORT.............................. 1
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`A. No Citations to the Original Disclosure ................................................ 1
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`B.
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`C.
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`Erroneous Attempt to use Incorporation by Reference ......................... 1
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`Insufficient Support in the Provisional Application ............................. 2
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`II.
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`IMPROPER BROADENING .......................................................................... 3
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`III. BRADIUM’S PROPOSED CLAIMS ARE INDEFINITE ............................. 4
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`A.
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`B.
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`Bradium Applies an Incorrect Indefiniteness Standard ........................ 4
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`Proposed Element [20M] Remains Indefinite ....................................... 4
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`IV. REWRITING THE PROPOSED AMENDMENTS IS WRONG .................. 5
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`V.
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`THE PROPOSED CLAIMS ARE OBVIOUS ................................................ 7
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`A.
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`B.
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`C.
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`D.
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`Bradium Wrongly Reads in Unrecited Limitations .............................. 7
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`Bradium Has Waived Any Arguments With Respect to Yaron ........... 9
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`Bradium’s Arguments Based on the Original Claims are Moot ......... 11
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`Bradium’s Interpretation of “Determining Priority” Is Wrong ........... 11
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`VI. NEW CLAIM 21 IS NOT A SUBSTITUTE CLAIM .................................. 12
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`i
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`IPR2018-00952
`U.S. 9,253,239
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`Bradium’s motion to amend had several critical flaws any one of which should
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`
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`lead to denying its motion. Bradium’s reply did not cure these flaws; instead it
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`highlighted them and introduced even more reasons to deny its motion.
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`I.
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`INSUFFICIENT WRITTEN DESCRIPTION SUPPORT
`Bradium must set forth support for its amendments in “the originally filed
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`disclosure” and in the provisional application. 37 C.F.R § 42.121(b); Western
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`Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, Paper 13, 7 (PTAB Apr. 25,
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`2018) (precedential). Bradium does not deny that it failed to cite the application of
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`the ’239 Patent in its motion. Paper 48, 5-6. Remediating in the Reply is untimely
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`and prejudicial. Unified must address these new arguments for the first time now
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`with less time and pages than it would have in its Opposition. Thus, Bradium’s
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`motion should be denied. Even if considered, the Reply does not meet the written
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`description requirement as discussed below.
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`A. No Citations to the Original Disclosure
`Bradium’s Reply merely cites to the issued patent—not the original disclosure
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`as required. 37 CFR § 42.121(b)(1); Western Digital Corp., Paper 13, 8. And the
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`patent citations do not address most of the claim limitations. Paper 48, 7. Thus,
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`Bradium failed 37 CFR § 42.121(b)(1) for at least these two reasons.
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`B.
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`Erroneous Attempt to use Incorporation by Reference
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` 1
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`IPR2018-00952
`U.S. 9,253,239
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`To justify its failure to cite to the original application of the ’239 Patent,
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`Bradium incorrectly argues that “it is well established law that when a provisional
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`application is incorporated by reference it becomes a part of the patent specification
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`itself.” Paper 48, 5. Written description support is “‘[e]ssential material’ that may be
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`incorporated by reference, but only by way of an incorporation by reference to a
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`U.S. patent or a U.S. patent application publication.” 37 C.F.R § 1.57(d) (emphasis
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`added); see also Droplets Inc. v. E*TRADE Bank, 887 F.3d 1309, 1318-1319 (Fed.
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`Cir. 2018). A provisional application is neither a U.S. patent nor a U.S. patent
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`application publication and, thus, cannot be incorporated by reference for the
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`purposes of providing “essential material” satisfying § 112. See, e.g., 37 C.F.R §
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`1.57(b) (requiring an application to be amended to incorporate inadvertently omitted
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`material from a provisional application deemed to be incorporated by reference).
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`Bradium’s failure is without excuse.
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`Bradium relies on Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
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`1272, 1282 (Fed. Cir. 2000); but that case merely discusses that material
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`incorporated by reference in a prior art document may be considered in an
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`anticipation determination—not whether such material can be used to satisfy § 112.
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`Insufficient Support in the Provisional Application
`C.
`The Opposition demonstrated that the provisional application failed to support
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`the predetermined color or bit per pixel depth and factor of two limitations (both in
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` 2
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`IPR2018-00952
`U.S. 9,253,239
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`proposed claim 20) and the determining priority (proposed claim 21) limitation.
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`Paper 42, 4-5. Rather than contesting this, Bradium improperly turns to the
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`specification of the ’239 Patent for each of these limitations—indeed, Bradium
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`appears to admit that the provisional application teaches away from the determining
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`priority limitation. Paper 48, 7. Because Bradium seeks to obtain an earlier priority
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`date (Paper 39, 5) but its provisional application does not support all of the elements
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`of its amendment, its motion to amend fails 37 CFR § 42.121(b)(2). Bradium also
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`fails 37 CFR § 42.121(b)(1) by only citing to the ’239 Patent itself rather than its
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`original application. Supra Section I.A.
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`The Opposition also demonstrated that the displaying the second portion
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`using the third update data parcel (proposed claim 20) limitation was unsupported.
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`Paper 42, 3-4. Neither Bradium nor its expert contests this. Paper 48, 6; Ex. 2059,
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`¶49. Bradium’s only argument is that this limitation contains a “typographical error”
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`and should be rewritten. Paper 48, 2, 6. Thus, as written, the parties agree that it is
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`unsupported. And Bradium should not be allowed to rewrite its amendment. Infra
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`Section IV.
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`II.
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`IMPROPER BROADENING
`Bradium does not attempt to justify its proposed claims. Paper 48, 8-9. Thus,
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`the motion to amend should be denied. Bradium desires to substantively rewrite the
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`claims to remediate this. Id., 2, 6. That is wrong as well. Infra Section IV.
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` 3
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`IPR2018-00952
`U.S. 9,253,239
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`Element [20M] remains improperly broadened even if Bradium were allowed
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`to rewrite it. Original claim 20 required a step of displaying the discrete portion
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`associated with the second viewpoint. Ex. 1001, 12:49-67. Bradium’s expert’s
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`asserted correction lacks a step of displaying the discrete portion associated with the
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`second viewpoint (numbered the “second” portion in the original claim and the
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`“third” portion in the proposed claim). Ex. 2059, ¶44.
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`III. BRADIUM’S PROPOSED CLAIMS ARE INDEFINITE
`A. Bradium Applies an Incorrect Indefiniteness Standard
`Bradium asserts that the Nautilus standard applies because it “issued later in
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`time” (Paper 48, 1), but the Board has held that the Packard standard applies when
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`using the BRI claim construction standard (which applies to this IPR). Telebrands
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`Corp. v. Tinnus Enterprises, LLC, 2016 WL 7985419, at *6-7 (PTAB Dec. 30,
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`2016), rev’d on other grounds, 733 F. App’x 1011 (Fed. Cir. 2018); see Ex parte
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`McAward, Appeal 2015-006416, 6, n.3. (PTAB Aug. 25, 2017) (precedential). All
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`of Bradium’s definiteness arguments rely on Nautilus and not Packard being
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`applied. Thus, they should be rejected for this reason alone.
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`Proposed Element [20M] Remains Indefinite
`B.
`Bradium admits this element contains an error. Paper 48, 1-2. Bradium alleges
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`that “the proper interpretation of the claims is readily apparent,” (Paper 48, 3), but
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`Bradium and its expert disagree on how the corrected element [20M] should read—
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` 4
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`IPR2018-00952
`U.S. 9,253,239
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`this results in very different claims. Compare Paper 48, 1-2 with Ex. 2059, ¶44.
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`Bradium alleges that a POSA would have understood that the word “second” in this
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`element should be rewritten as “third” (Paper 48, 1-3), but Bradium’s expert alleges
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`that a POSA would have understood that “the first recitation of third update data
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`parcel . . . should in fact be the second update date parcel.” Ex. 2059, ¶ 44 (emphasis
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`in original).
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`
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`This shows that the proper interpretation of the claims is not readily apparent;
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`rather, there are three distinct options: (1) “displaying the second discrete portion . .
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`. using the third update data parcel” (as amended); (2) “displaying the third discrete
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`portion . . . using the third update data parcel” (Bradium); and (3) “displaying the
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`second discrete portion . . . using the second update data parcel” (Bradium’s expert).
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`IV. REWRITING THE PROPOSED AMENDMENTS IS WRONG
`
`Bradium’s cure-all is to allege that its amendments include “typographical
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`errors” correctable via a certificate of correction after the claims issue. Paper 48, 4
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`n.1. But it would violate § 112 to knowingly issue a patent with such an error, despite
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`promises to correct it later. And no certificate of correction can be granted because
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`Bradium cannot possibly show the mistake “occurred in good faith” when it sought
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` 5
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`IPR2018-00952
`U.S. 9,253,239
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`for the claims to issue with the mistake. 35 U.S.C. § 255. Finally, to correct these
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`alleged “typographical errors,” Bradium should have sought “authorization from the
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`Board to revise its motion to amend as soon as possible.” Amendments to the Rules
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`and Practice for Trials Before the PTAB, 80 Fed. Reg. 50719, 50724 (Aug. 20, 2015)
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`(Response to Comment 7). Bradium waited for its Reply to argue for correction
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`rather than notifying the Board as soon as it learned of these “typographical errors”
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`which could have been no later than the Opposition.
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`The alleged errors are not merely “typographical.” For example, Bradium and
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`its expert cannot even agree on the correct reading of element [20M]. Supra Section
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`III.B.
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`As another example, for element [20P], Bradium wrongly asserts that Unified
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`argued indefiniteness for this element so that Bradium could misuse the Nautilus
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`standard as authority to rewrite the element. Compare Paper 42, 6-7 with Paper 48,
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`1-4. Regardless, there is no evidence that a POSA would have been reasonably
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`certain that element [20P] contains a typographical error. Paper 48, 1-4. Bradium
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`only provides a conclusory statement that “it is clear that since the second request
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`was incremented to the third request, the ‘second derivative image’ in the ‘wherein’
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`clause should also be incremented to the ‘third derivative image.’” Id., 2. Bradium’s
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`expert similarly provides a conclusory statement that “any other interpretation would
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`read out the preferred embodiment of the invention and render it inoperable” without
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` 6
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`IPR2018-00952
`U.S. 9,253,239
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`identifying which embodiment is allegedly read out or citing any evidence in
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`support. Ex. 2059, ¶50. The expert’s sole citation to the provisional specification
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`(Id., ¶48 (citing Ex. 1019, 6:25-7:1)) provides no guidance regarding whether the
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`derivative images of element 20[P] are from the same viewpoint (i.e., the first and
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`second derivative images) or different viewpoints (i.e., the first and third derivative
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`images). This element describes the division of the original image into sub images
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`based on spatial coverage (i.e. proposed “corrected” claim 20) or resolution (i.e.,
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`original proposed claim 20). Ex. 1001, 6:3-18, Fig. 2. Paper 2, 33-34; Ex. 1005,
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`¶¶154-172.1, Paper 42, 21-22; Ex. 1027, ¶87. Objectively, both options are equally
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`feasible—Bradium’s subjective intent does not transform one feasible option into a
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`“typographical error.”
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`V. THE PROPOSED CLAIMS ARE OBVIOUS
`A. Bradium Wrongly Reads in Unrecited Limitations
`Bradium’s main argument that the proposed claims (with Bradium’s
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`corrections) are patentable is based on reading in unwritten limitations (that are not
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`even recited in Bradium’s corrections). Specifically, requiring that the claimed first
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`and second image parcels have different resolutions and different viewpoints. Paper
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`48, 9; Ex. 2059, ¶60. Bradium argues that the prior art fails to teach or suggest “any
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`prioritization which involved both image parcels involving different resolutions
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`with respect to different viewpoints as required by the claims.” Paper 48, 9
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` 7
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`IPR2018-00952
`U.S. 9,253,239
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`(emphasis added). Yet, the claims recite first and second image parcels having
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`different resolutions but the same viewpoint. Ex. 2055, ¶45 [20C], [20G]. The
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`claimed third image parcel is based on a different viewpoint, but the claim is silent
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`with respect to its resolution. Id., [20J]-[20K]. Thus, the claims require (1) first and
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`second image parcels with different resolutions but the same viewpoint; and (2) a
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`third image parcel with a different viewpoint but not specifying resolution.
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`The prior art in the Opposition renders the claims (as written) obvious.
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`Bradium’s expert admits that Yaron discloses the claim elements added by the
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`proposed amendment, quoting and agreeing with Unified’s description that Yaron
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`discloses “multiple requests for the same viewpoint such that the second request is
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`a higher resolution, is displayed after the first request, and is overlapping the first
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`request.” Id., ¶45.
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`If the claims are interpreted to include Bradium’s unwritten limitation, this
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`feature is still rendered obvious. Paper 42, 18-21. Yaron discloses multiple requests
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`at a single viewpoint with varying resolutions and then requesting an image parcel
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`at a new viewpoint. Id., 20-21. Yaron’s teachings indicate that the request at the new
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`viewpoint would have a different resolution than at least one of the multiple requests
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`at the original viewpoint. Id. Yaron discloses prioritizing these requests within the
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`same viewpoint with the requests from different viewpoints. Id.
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`Also, Reddy operates in this same manner with respect to this feature. Id., 18-
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` 8
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`IPR2018-00952
`U.S. 9,253,239
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`19. Bradium’s characterizations of Reddy are pure attorney argument and should be
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`rejected. Paper 48, 10-12. And Bradium is wrong that Unified’s expert’s analysis of
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`Reddy is “hindsight reconstruction”—they are based on prior art documents. Ex.
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`1027, ¶¶72, 77 (citing Ex. 1004, ¶7; Ex. 1028, 3:65-4:9).
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`Bradium Has Waived Any Arguments With Respect to Yaron
`B.
`Bradium failed to substantively address Yaron at all (Paper 48, 9-12)—as a
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`result, the Opposition’s arguments that Yaron discloses the features added in the
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`proposed substitute claims are unrebutted. Bradium merely cites to paragraphs 61-
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`74 of its expert’s report to support a single conclusory sentence. Id., 9. Without any
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`arguments supporting its conclusion, Bradium has essentially acceded to Unified’s
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`position.1 Bradium cannot rely on its expert’s report to include arguments that
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`should be in its brief. 37 C.F.R. § 42.6(a)(3).
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`If the Board considers the improperly presented expert arguments, it should
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`find them unpersuasive. Bradium’s expert relies on an improper reading of the
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`claimed prioritization limitation. Ex. 2059, ¶71. By omitting a portion of the claim
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`limitation, Bradium’s expert misleadingly alleges that the claim requires that the first
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`1 Bradium’s initial Reply (Paper 44), which was 7 pages over the page limit, included
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`these arguments at pages 16-19. But, when Bradium filed its Corrected Reply,
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`Bradium cut these arguments—thus, waiving them.
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` 9
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`IPR2018-00952
`U.S. 9,253,239
`
`request be given a greater priority than both the second request and the third request.
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`Id. But, the claim only requires that the first data parcel (based on the first request)
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`have a greater priority than the second data parcel (based on the second request). Ex.
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`2055, ¶45 [20N]-[20O]. While the claim requires a prioritization between the first
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`and third requests, the claim does not specify which request has a greater priority.
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`Id. Nor does Bradium’s proffered written description support discuss a preferred
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`priority order. Paper 39, 13-14 (citing Ex. 1019, 5:20-25).
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`Even if this feature is read into the claims, it is rendered obvious by Yaron.
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`The claims do not specify that the first request must be issued before third request.
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`The use of the terms “first,” “second,” and “third” should not necessarily be
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`interpreted to impose ordering on a claim. 3M Innovative Props. Co. v. Avery
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`Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). It is clear in these claims
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`that the use of these terms does not necessitate a sequential order because this would
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`render at least portions of the “determining priority” step redundant. Ex. 2055, ¶45
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`[20N]. As Bradium’s expert acknowledges, Yaron discloses higher priorities for
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`lower resolution requests within each viewpoint; and that requests for a later
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`viewpoint are given a higher priority than requests for an earlier viewpoint. Ex. 2059,
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`¶¶62, 64, 72-73. Thus: (1) the claims do not specify a particular order first request
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`and third request, (2) Yaron discloses low to high resolution prioritization at various
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`viewpoints, and (3) Yaron discloses requests for a later viewpoint are given a higher
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`10
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`IPR2018-00952
`U.S. 9,253,239
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`priority than requests for an earlier viewpoint. Yaron’s request at the original
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`viewpoint discloses the claimed third request, and Yaron’s later requests at a later
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`viewpoint discloses the claimed first and second requests.
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`Finally, if this feature is read into the claims, it is also rendered obvious by
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`Reddy. Reddy’s prefetching feature provides for determining priority between two
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`different viewpoints in a manner that the earlier viewpoint is prioritized higher than
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`the later viewpoint. Paper 41, 21-24; Paper 2, 13-17, 22-41, 68-69.
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`C. Bradium’s Arguments Based on the Original Claims are Moot
`Bradium argues that “Reddy does not teach or suggest prioritization of two
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`different viewpoints as required by the claims.” Paper 48, 11. But, original claim 20
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`recited this. Ex. 1001, 12:29-39, 12:49-60, 14:41-43. Because the motion to amend
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`is contingent on the original claim being found unpatentable over the prior art (Paper
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`39, 1) if the Board finds the original claims unpatentable, these arguments are moot.
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`D. Bradium’s Interpretation of “Determining Priority” Is Wrong
`Bradium attempts to distinguish the prior art by arguing that a system that uses
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`“strict ordering”2 is not “determining priority.” Paper 48, 11. Bradium excludes what
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`they call “strict ordering” from the scope of “determining priority.” But there is no
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`disclaimer that justifies narrowing the term. To the contrary, using a predefined order
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`2 Unified is unclear what Bradium means by “strict ordering.”
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`11
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`IPR2018-00952
`U.S. 9,253,239
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`based on resolution and/or viewpoint is a way to determine priority according to the
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`patent. Ex. 1001, 6:55-57, 10:56-57, 11:5-7. Similar to the original claim, the
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`proposed claim “broadly requires prioritizing requests for update data parcels.”
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`Paper 31, 40. Bradium has not argued that original claim 20 excludes “strict
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`ordering.” Thus, Bradium should have proposed an amendment to recite this
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`restriction.
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`Besides, the prioritization in Yaron does not require strict ordering. As a user’s
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`viewpoint changes, Yaron’s system continuously analyzes whether pending requests
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`are still within the user’s field of view and should be retained. Ex. 1028, 15:19-32.
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`VI. NEW CLAIM 21 IS NOT A SUBSTITUTE CLAIM
`There is a rebuttable presumption that a single substitute claim is sufficient
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`(Western Digital Corp., Paper 13, 4-5), which Bradium has not overcome. A “desire
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`to obtain a new set of claims having a hierarchy of different scope typically would
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`not constitute a sufficient special circumstance.” Idle Free Sys., Inc. v. Bergstrom,
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`Inc., IPR2012-00027, Paper 26, 6 (PTAB Jun. 11, 2013) (emphasis in original)
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`(motions to amend do not allow “a complete remodeling of [the] claim structure
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`according to a different strategy.”). This is exactly what Bradium is seeking to do.
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`12
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`Dated: September 3, 2019
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`IPR2018-00952
`U.S. 9,253,239
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`Respectfully submitted,
`
`/Roshan Suresh Mansinghani/
`Roshan Suresh Mansinghani
`Reg. No. 62,429
`
`13
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`CERTIFICATE OF SERVICE
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`IPR2018-00952
`U.S. 9,253,239
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`I hereby certify that on September 3, 2019 a copy of the foregoing
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`PETITIONER’S SUR-REPLY TO PATENT OWNER’S REPLY TO
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
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`MOTION TO AMEND was served via electronic mail, as agreed to by counsel, upon
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`the following counsel for Patent Owner:
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`Chris J. Coulson
`Michael N. Zachary
`Bunsow De Mory LLP
`701 El Camino Real Redwood City, CA 94063
`Email: ccoulson@bdiplaw.com
`Email: mzachary@bdiplaw.com
`
`
`Michael E. Shanahan
`Email: mshanahan@generalpatent.com
`
`
`/Roshan Suresh Mansinghani/
`Roshan Suresh Mansinghani
`Reg. No. 62,429
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