`____________________
`
`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
`____________________
`
`SECOND 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
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 2
`II.
`III. MATERIALS CONSIDERED ........................................................................ 2
`IV. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ..................... 3
`V.
`SUMMARY OF OPINIONS ........................................................................... 4
`VI. LEGAL STANDARDS ................................................................................... 5
`A.
`Resolving the Level of Ordinary Skill in the Pertinent Art. ................. 6
`B.
`THE ’239 PATENT ............................................................................... 8
`C.
`Substitute claims .................................................................................. 12
`D. How A POSITA would understand Displaying step 20M .................. 17
`VII. Claim Construction and Patentability ............................................................ 20
`A.
`The New Prior Art Reference Yaron ................................................... 22
`VIII. CONCLUDING STATEMENT .................................................................... 25
`
`
`
`
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`
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by counsel for Bradium Technologies LLC
`
`(“Bradium” or “Patent Owner”) as an expert consultant in regards to inter partes
`
`review proceeding IPR2018-00952 for U.S. Patent No. 9,253,239 (“the ’239
`
`Patent”).
`
`2.
`
`I understand that Bradium is seeking to amend claim 20 in the
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`alternative, and, should original claim 20 be invalidated, amended claim 20 and
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`new claim 21 may be considered by the Board.
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`3.
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`I understand that, for this proceeding, IPR2018-00952, the Board has
`
`instituted a review as to claim 20.
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`4.
`
`I understand that the Board has instituted an inter partes review on a
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`on a single ground: whether Claim 20, which depends from Claim 1, is
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`unpatentable as obvious over the combination of Reddy, Hornbacker, and Rosasco.
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`5.
`
`I have been asked to consider whether amended Claim 20 and new
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`claim 21, are indefinite, are supported by the written description and if those
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`claims are patentable as of the date of the invention over the reasons and prior art
`
`set forth in Petitioner’s Opposition.
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`6.
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`For time spent in connection with this case, I am being compensated
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`at my customary rate. My compensation is not dependent upon the outcome of this
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`petition or any issues involved in or related to the ’239 Patent, and I have no other
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`
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`1
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`
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`financial stake in this matter. I have no financial interest in, or affiliation with, any
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`of the real parties in interest or the patent owner.
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`II. BACKGROUND AND QUALIFICATIONS
`7.
`I previously supplied a summary of my education, work experience in
`
`the Declaration of Dr. Peggy Agouris (EX2054). In addition, my curriculum vitae,
`
`which provides a detailed summary of my education and work experience is
`
`attached to the Declaration of Dr. Peggy Agouris (EX2054) as Appendix A.
`
`III. MATERIALS CONSIDERED
`8.
`The materials I considered include amended claim 20 and new claim
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`21, the ’239 Patent (EX1001), materials incorporated by reference therein, the
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`prosecution history for the ’239 Patent (EX1013), the Petition from Unified for
`
`inter partes review (Paper No. 2) Unified’s Motion Opposing amendment (Paper
`
`XX, and the first Wilson Declaration in support of the Petition (EX1005) and the
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`second Wilson declaration in Support of Unified’s Opposition (EX 1027). I also
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`considered the Board’s Institution Decision (Paper No. 31) and U.S. Patent No.
`
`6,496,189 to Yaron et al. (“Yaron”) (EX1028). Further, I also considered the
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`materials that I refer to and that I cite in this declaration.
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`9.
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`In addition, I have drawn on my experience and knowledge, as
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`discussed above and described more fully in my CV, in the areas of image
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`processing, geographic information systems, interactive computer graphics, and
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`
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`2
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`
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`dynamic visualization, among other areas.
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`10.
`
`I understand that Bradium considers the date of invention for the ’239
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`Patent to be October 1999. I understand that Mr. Wilson considered the date of
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`invention to be December 2000 based on the ’239 patent’s discussion of the
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`technology background. See EX1005 ¶5.
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`11. Counsel for Bradium has asked me to assume that the asserted
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`references, Reddy, Yaron, Hornbacker, and Rosasco, are prior art for the purposes
`
`of my analysis. I have further been asked to consider both asserted dates of
`
`invention. My analysis would not change based on which of these dates I assume.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`12. The opinions I express herein are given from the point of view of a
`
`person of ordinary skill in the art, as described above, at the time of the invention
`
`of the ’239 Patent (which I will treat as the latter of the two dates for
`
`consideration). Even if I do not repeat this explicitly, this is the perspective that I
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`applied in my analysis and in this declaration, unless I indicate otherwise.
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`13. Petitioner in this proceeding stated that a POSITA would have a
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`Master of Science or equivalent degree in electrical engineering or computer
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`science, or a Bachelor of Science or equivalent degree in electrical engineering or
`
`computer science, with at least 5 years of experience in a field related to GIS or the
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`transmission of digital image data over a computer network. Petition at 10-11.
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`
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`3
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`
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`14.
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`I have been asked to apply, and have applied, Petitioner’s
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`understanding of the level of skill of a POSITA in my analysis herein.
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`15.
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`I have considered the issues on which I opine in this declaration under
`
`Petitioner’s asserted level of ordinary skill in the art, and also the level of skill of a
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`16. POSITA that the Board previously stated (as I indicate above) and
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`that I applied in my prior declaration (EX2014 for IPR2016-01897). My opinion
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`would be not change whichever of these levels of ordinary skill in the art I apply in
`
`my analysis.
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`17.
`
`It is also my opinion that the level of skill of a POSITA would not
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`change substantially between October 1999 and December 2000 (the date of the
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`provisional applications to which the ’239 Patent claims priority) for the purposes
`
`of my analysis of the claims and asserted prior art references.
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`V.
`
`SUMMARY OF OPINIONS
`18.
`I find that all the claim elements recited in the substitute claims
`
`(amended claim 20 and new claim 21) are fully disclosed by U.S. provisional
`
`application 60/258,468 (the ‘468 application) which is incorporated into the
`
`specification of the ’239 patent by reference. Therefore, the substitute claims are
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`entitled to a priority date of no later than December 24, 2000. No new matter has
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`been added by the substitute claims.
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`19. Based on my understanding of the proper scope of the substitute
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`
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`4
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`
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`claims, it is also my opinion they are not unpatentable based on the following
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`references alone or in combination: Reddy, Yaron, Hornbacker, and Rosasco and
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`FlashPix. The substitute claims are patentable over Reddy alone or in combination
`
`with other art relied on in the Petition at least because the combination fails to
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`teach or suggest any prioritization which involves both image parcels involving
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`different resolutions with respect to different viewpoints as required by the claims.
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`20. Petitioner does not assert that Hornbacker offers any teaching or
`
`suggestion regarding priority, and it is also my opinion that Hornbacker offers no
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`such teaching or suggestion.
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`21. Based on my understanding of the definiteness requirement under 35
`
`U.S.C. section 112, it is also my opinion that amended claim 20 and new claim 21
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`are not indefinite.
`
`22. For these reasons, and the reasons explained more fully in my
`
`declaration as a whole, it is my opinion that the substitute claims are not
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`unpatentable in view of the prior art cited Petitioner Unified.
`
`VI. LEGAL STANDARDS
`23.
`I understand that an invention that would have been obvious to a
`
`person of ordinary skill at the time of the invention is not patentable. I understand
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`that the claimed invention as a whole must be considered in an obviousness
`
`analysis.
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`5
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`24.
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`I understand that the obviousness inquiry involves the following
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`factual determinations:
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`(A) Determining the scope and content of the prior art;
`
`(B) Ascertaining the differences between the claimed
`
`invention and the prior art; and
`
`(C) Resolving the level of ordinary skill in the pertinent art.
`A. Resolving the Level of Ordinary Skill in the Pertinent Art.
`25.
`I understand that secondary considerations of non-obviousness are
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`also relevant to the obviousness determination where present, although I
`
`understand that Patent Owner has not presented particular evidence in this
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`proceeding regarding secondary considerations, and I have therefore not
`
`considered secondary considerations in my analysis.
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`26.
`
`I understand that a prima facie showing of obviousness must
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`demonstrate that the cited references, in combination, disclose each element of the
`
`claim.
`
`27.
`
`I understand that the entirety of the disclosures of the asserted prior art
`
`references must be considered as part of the obviousness analysis. I further
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`understand that non-obviousness cannot be shown by merely attacking the
`
`references individually where obviousness is based on a combination of references.
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`28.
`
`I understand that the combination of familiar elements according to
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`
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`6
`
`
`
`
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`known methods is likely to be obvious when it does no more than yield predictable
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`results.
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`29.
`
`I further understand that a patent that simply arranges old elements
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`with each performing the same function it had been known to perform and yields
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`no more than one would expect from such an arrangement, is obvious.
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`30.
`
`I further understand that the following are examples of rationale that
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`may support a conclusion of obviousness:
`
`(A) Combining prior art elements according to known methods to
`yield predictable results;
`(B) Simple substitution of one known element for another to obtain
`predictable results;
`(C) Use of known technique to improve similar devices (methods,
`or products) in the same way; and
`(D) Applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results.
`
`31.
`
`I understand that the claims and specification of a patent must be read
`
`and construed through the eyes of a person of ordinary skill in the art at the time of
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`the priority date of the claims. I have also set forth my understanding of the
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`applicable Broadest Reasonable Interpretation (BRI) standard and certain legal
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`standards in the section of my declaration regarding claim construction.
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`32. Counsel for Bradium has advised me that patent claims must be
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`definite. I understand that the claims, when read in light of the patent’s
`7
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`
`
`
`
`
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`specification and file history, must inform those skilled in the art of the scope of
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`the invention with a reasonable degree of certainty. The purpose is to inform the
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`public of the scope of the invention so that others can understand what actions
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`constitute infringement.
`
`B.
`THE ’239 PATENT
`33. As the patent explains, the inventors of the ’239 patent developed a
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`method for the retrieval of large-scale images over limited bandwidth network
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`communications channels or usable by small client devices. See, e.g., EX1001,
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`3:10-39; 3:47-51; 4:4-12.
`
`34. The patent explains that the preferred operating environment for the
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`invention includes, as shown in Figure 1 of the ’239 Patent, a server (12) which
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`serves image data to client systems such as personal computers (18) and
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`webphones (20) in response to requests received from the client.
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`
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`
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`35. The patent explains that in a preferred embodiment, the server
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`8
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`
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`maintains source image data (e.g., based on high-resolution map or satellite
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`imagery of geographic terrain) and overlap image data. EX1001, 5:56-6:2. The
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`server preferably pre-processes the image data into a series of derivative images
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`that are subdivided into a regular array, as shown in Figure 2 of the ’239 Patent:
`
`
`
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`EX1001, 6:3-28.
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`
`
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`36. The patent explains that to support display of a portion of, for
`
`example, a large-scale two-dimensional image rendered in three-dimensional
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`space, portions of the image (e.g., image parcels) are requested from the server and
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`displayed on the client device. See, e.g., EX1001, 3:43-60. Requests for image
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`parcels are prepared by selecting image parcels relative to particular operator-
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`controlled image viewpoints selected on the client device. EX1001, Abstract. The
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`client requests the image parcel, and the server provides it. EX1001, 3:43-60. The
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`client displays the image parcel as a discrete portion of the predetermined image.
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`EX1001, 3:43-60. The invention enables retrieval of large-scale images over a
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`
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`9
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`
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`network. EX1001, Abstract.
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`37. The patent explains that the client may display a two-dimensional
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`image rendered in three-dimensional space based on “a viewing frustum placed
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`within a three-dimensional space over the imaged displayed on the client 18, 20.”
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`Client user navigational inputs are supported to control the x, y lateral, rotational
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`and z height positioning of the viewing frustum over the image as well as the
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`camera angle of incidence relative to the plane of the image.” EX1001, 5:46–55.
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`38. The patent explains that the preferred architecture (40) of a client
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`system for implementing the invention is shown in Figure 3. The architecture
`
`dynamically adapts to changes in viewing frustum (i.e., the user-selected viewpoint
`
`at the client), re-prioritizing among requests that are associated with different
`
`viewpoints. EX1001, 7:54-62, 9:4-21, 10:20-52, 11:17-21.
`
`
`
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`39. As the ’239 patent explains, “Changes in the viewing frustum are
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`determined from user input navigation commands by a frustum navigation block
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`
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`10
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`
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`50,” as shown by the “NAVIGATION COMMANDS” illustrated on Figure 3.
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`EX1001, 7:45-47. “The effective change in viewing frustum as determined by the
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`frustum navigation block 50 is provided to the control block 44.” Id., 7:51-53. The
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`control block, in turn “based in part on changes in the viewing frustum, determines
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`the ordered priority of image parcels to be requested from the server.” Id., 7:54-57
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`(emphasis added).
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`40. The patent further states: “The image parcel requests are placed in a
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`request queue 52 for issuance by the parcel request client 42. Preferably, the
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`pending requests are issued in priority order, thereby dynamically reflecting
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`changes in the viewing frustum with minimum latency.” Id., 7:57-63 (emphasis
`
`added).
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`41. As Figure 5 of the patent shows, “an image parcel management
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`process 80 implements a loop that determines image parcels subject to update 82
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`and creates corresponding image parcel download requests 84.” Id., 8:31-35. Four
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`image parcel download requests are placed into a request queue at a time, and each
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`of these image parcel requests is assigned a download priority based its importance
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`for the current viewpoint. Id., 10:4-52. When the user changes the viewing
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`frustum via navigational input, the system will evaluate and add new image parcel
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`requests to the request queue based on the new viewpoint. Id., 9:18-21.
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`11
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`42. A POSITA would understand from the disclosure of the patent
`
`specification that download requests for prior viewpoints may or may not be
`
`removed from the queue, for example depending on the memory available at the
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`client. Id., 8:57-62. A POSITA would further understand that requests from
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`immediately prior viewpoints that remain in the queue are prioritized against new
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`requests that may be based on a different user-selected viewpoint. Id., 9:3-16.
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`C.
`Substitute claims
`43. Amended claim 20 and new claim 21 are reproduced below. I have
`
`inserted claim element designations and also bolded certain claim terms that I
`
`consider particularly relevant to my analysis. I have highlighted the typographical
`
`errors pointed out by Unified’s counsel to aid in the understanding of the written
`
`description support for the claim terms as intended.
`
`[20 PREAMBLE] A method of retrieving images over a
`network communication channel for display on a user computing
`device, the method comprising steps of:
`
`
`
`12
`
`
`
`
`
`
`
`[20A] issuing a first request from the user computing device to
`one or more servers, over one or more network communication
`channels, the first request being for a first update data parcel
`corresponding to a first derivative image of a predetermined
`image,
`
`[20B] the predetermined image corresponding to source image
`data, the first update data parcel uniquely forming a first discrete
`portion of the predetermined image,
`
`[20C] wherein the first update data parcel is selected based on a
`first user-controlled image viewpoint on the user computing
`device relative to the predetermined image;
`
`[20D] receiving the first update data parcel at the user computing
`device from the one or more servers over the one or more
`network communication channels, the step of receiving the first
`update data parcel being performed after the step of issuing the
`first request;
`
`[20E] displaying the first discrete portion on the user computing
`device using the first update data parcel, the step of displaying
`the first discrete portion being performed after the step of
`receiving the first update data parcel;
`
`[20F] issuing a second request from the user computing device
`to the one or more servers, over the one or more network
`communication channels, the second request being for a second
`update data parcel corresponding to a second derivative image of
`
`13
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`
`
`
`
`
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`the predetermined image, the second update data parcel uniquely
`forming a second discrete portion of the predetermined image,
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`[20G] wherein the second update data parcel is selected based
`on the first user-controlled image viewpoint on the user
`computing device relative to the predetermined image; the first
`and the second discrete portions have a first non-empty overlap
`area; the second update data parcel has a greater resolution
`than the first update data parcel;
`
`[20H] receiving the second update data parcel at the user
`computing device from the one or more servers over the one or
`more network communication channels, the step of receiving the
`second update data parcel being performed after the step of
`issuing the second request;
`
`[20I] displaying the second discrete portion on the user
`computing device using the second update data parcel, the step
`of displaying the second discrete portion being performed after
`the step of receiving the second update data parcel and after the
`step of displaying the first discrete portion;
`
`[20J] issuing a second third request from the user computing
`device to the one or more servers, over the one or more network
`communication channels, the second third request being for a
`second third update data parcel corresponding to a second third
`derivative image of the predetermined image, the second third
`update data parcel uniquely forming a second third discrete
`portion of the predetermined image, wherein the second third
`14
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`
`
`
`
`
`
`update data parcel is selected based on a second user- controlled
`image viewpoint on the user computing device relative to the
`predetermined image,
`
`[20K] the second user-controlled image viewpoint being
`different from the first user-controlled image viewpoint;
`
`[20L] receiving the second third update data parcel at the user
`computing device from the one or more servers over the one or
`more network communication channels, the step of receiving the
`second third update data parcel being performed after the step of
`issuing the second third request;
`
`[20M] displaying the second 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;
`
`[20N] determining priority of the first, request and the second,
`and the third requests such that the first update data parcel
`has a greater priority and requested, received, and displayed
`before the second data parcel,
`
`[20O] whereby enabling local resolution enhancement in the
`first non-empty overlap area for the display according to the
`first user-controlled viewpoint on the user computing device;
`wherein:
`
`[20P] wherein: a series of K1-N derivative
`15
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`images of
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`
`
`
`
`
`
`progressively lower image resolution comprises the first
`derivative image and the second derivative image, the series of
`K1-N of derivative images resulting from processing the source
`image data, series image K0 being 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, [20N] 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 factor of two, and the array
`subdivision being related by a factor of two.
`
`[21 PREABLE] The method of claim 21, further comprising the
`steps of:
`
`[21A] issuing an additional request from the user computing
`device to the one or more servers, over the one or more network
`communication channels, the additional request being for an
`additional update data parcel corresponding to an additional
`derivative image of the predetermined image, the additional
`update data parcel uniquely forming an additional discrete
`portion of the predetermined image, wherein the additional
`update data parcel is selected based on the first user-controlled
`image viewpoint on the user computing device relative to the
`predetermined image; the additional discrete portion and the
`first non-empty overlap area have a second non-empty overlap
`area; the additional update data parcel has a greater resolution
`than the second update data parcel;
`
`16
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`
`
`
`
`[21B] receiving the additional update data parcel at the user
`computing device from the one or more servers over the one or
`more network communication channels, the step of receiving the
`additional update data parcel being performed after the step of
`issuing the additional request;
`
`[21C] displaying the additional discrete portion on the user
`computing device using the additional update data parcel, the
`step of displaying
`the additional discrete portion being
`performed after the step of receiving the additional update data
`parcel and after the step of displaying the second discrete portion;
`
`[21D] 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, whereby enabling progressive local resolution
`enhancement in the second non-empty overlap area for the
`display according to the first user-controlled viewpoint on the
`user computing device.
`
`D. How A POSITA would understand Displaying step 20M
`44.
`I recognize and agree there is a minor typographical error in claim
`
`element [20M]. In particular, that the first recitation of third update data parcel in
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`element [20M] should in fact be the second update data parcel.
`
`45.
`
`I recognize and agree there is a minor typographical error in claim
`
`element [20P]. In particular, that the first recitation of second derivative image in
`
`
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`17
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`
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`element [20P] should in fact be the third derivative image.
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`46. 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.
`
`47. The first reason is that a POSITA, under the controlling legal
`
`standard, 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
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`all of displaying the second discrete portion… using the third update data parcel…
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`as pointed out by Unified’s Opposition. Rather, that only displaying the second
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`discrete portion… using the second update data parcel is disclosed for element
`
`[20M].
`
`48. 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.
`
`49. Moreover, in consulting the disclosure, (the ‘239 specification and the
`
`‘468 provisional) it is apparent that the specification essentially discloses one
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`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
`
`element [20M]. For example, see Ex 1019 at 6:25-7:1.
`
`
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`18
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`
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`50. 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.
`
`51. 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
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`pattern, and its underlying intentions and logic of the amendment would be
`
`recognized by a POSITA and would inform his understanding of the claim.
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`52. 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 errors
`
`on its face.
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`19
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`53. Lastly, another factor in determining a POSITA’s understanding is the
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`treatment and understanding of the claim term afforded by others, including
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`opposing counsel. Unified’s Opposition brief at 6-7 indicates that they clearly
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`understood that the displaying of the second discrete portion…is done using the
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`second update data parcel and not the third by recognizing the other way around
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`renders the claim inoperable. Similarly, that a third derivative image is used and
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`not a second for element [20P].
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`54.
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`It is my understanding that a claim need not be absolutely perfect but
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`rather convey its subject matter with reasonable certainty. In view of sections 44-
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`53 above, I conclude that claim 20, although somewhat imperfect as now written,
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`would be clearly understandable by a POSITA and therefore meets this standard.
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`VII. Claim Construction and Patentability
`55.
`I understand that the Broadest Reasonable Interpretation (BRI)
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`standard applies in this proceeding. I have applied the BRI standard in my analysis.
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`I have considered the language of the claims, the teachings of the specification, and
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`the prosecution history.
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`56.
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`I understand that BRI does not mean the broadest possible
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`interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017).
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`57.
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`I understand that in accordance with the BRI standard, the claim
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`should be interpreted in a manner that is reasonable in light of the specification. Id.
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`20
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`58. A further understand that BRI interpretation is “an interpretation that
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`corresponds with what and how the inventor describes his invention in the
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`specification, i.e., an interpretation that is consistent with the specification. I have
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`been informed that claim construction under BRI cannot be divorced from the
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`specification and the record evidence.” Sophos Ltd. V. Iancu, 727 F.3d App’x 656,
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`661 (Fed. Cir. 2018) (citation omitted).
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`59.
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`In arriving at my opinion, I have not relied on any specific claim
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`construction to demonstrate patentability of the proposed substitute claims over the
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`prior art. Rather, I have determined patentability based on the new limitations of
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`the proposed substitute claims, which are absent from the prior art. The plain and
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`ordinary meaning of the new limitations—taken as a whole—is discernible from
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`their context and would be readily understood by those of ordinary skill in the art.
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`60.
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`In my opinion, none of the references of record, and the art cited by
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`others, either alone or in combination, teaches or suggests at least the patentable
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`features set forth in [20D], [20J], [21A], [21D] which include: determining a
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`priority for the first and the second request for updated image parcels which
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`involves both image parcels having different resolutions with respect to different
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`viewpoints wherein respective parcels’ areas are non- empty overlap areas,
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`whereby enabling resolution enhancement in the non-empty overlap area for the
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`same first user-controlled viewpoint on the user computing device as specified in
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`21
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`
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`the substitute claims. And, accordingly, they are patentable at least on this basis
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`alone.
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`A. The New Prior Art Reference Yaron
`61. Yaron is alleged to disclose “a system for displaying terrains in a
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`progressive manner. EX1028, 1:11-13, 3:13-24, 4:29-46, 5:1-4, 8:59-9:21, 9:48-54,
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`11:19-39, 12:58-13:7, 13:65-14:9, 14:47-53.
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`62. Yaron teaches that when a new area is requested for display, first a
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`single low resolution “block” is requested for that area and displayed. Then,
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`subsequent requests for higher resolution blocks are sent, and when those higher
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`resolution blocks are received, they are inserted in the appropriate place within the
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`low-resolution block until the entire image is filled with the high-resolution blocks.
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`Id., 3:40-53.”
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`63. Yaron, however, discloses that, when the viewpoint is changed, the
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`prior queue is abandoned in view of a new queue based on the new viewpoint.
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`Consequently, Yaron does not teach or suggest any prioritization which involves
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`both image parcels involving different resolutions with respect to the same
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`viewpoint, let alone different viewpoints as required by the claims.
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`64.
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`Indeed, as admitted by Petitioner, “Yaron discloses multiple requests
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`for the same viewpoint such that the second request is a higher resolution, is
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`displayed after the first request, and is overlapping the first request. EX1027, ¶¶77-
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`22
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`78.”
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`65. Petitioner appears to further agree with this assessment, stating in
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`Paper 42, pages 19-20, “Furthermore, as discussed in the Petition (pp. 67-71), a
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`POSITA would have understood that for another viewpoint a similar prioritization
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`would occur with respect to the lower-resolution requests and the higher resolution
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`requests.
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`66. Therefore, in addition to prioritizing multiple overlapping images
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`requested from a single viewpoint (i.e., the claimed first request (lower resolution
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`tiles) and second request (higher resolution tiles)), Reddy also describes a
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`prioritization for images requested from a second viewpoint (i.e., the claimed third
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`request). Id.”; “A POSITA would have understood that for another viewpoint a
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`similar prioritization would occur with respect to the lower-resolution requests and
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`the higher resolution requests. EX1027, ¶85.”
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`67. Thus, Petitioner admits that according to the teachings