Inter Partes Review
`U.S. Patent No. 6,611,289
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC., v. YU ET AL.
`IPR2019-01258*
`David O’Brien, Haynes and Boone, LLP
`Hong Shi, Haynes and Boone, LLP
`
`* Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc., who filed a petition in
`IPR2020‐00492, have been joined as petitioners in this proceeding
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`1
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`U.S. Patent No. 6,611,289
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC., v. YU ET AL.
`IPR2019-01258*
`David O’Brien, Haynes and Boone, LLP
`Hong Shi, Haynes and Boone, LLP
`
`* Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc., who filed a petition in
`IPR2020‐00492, have been joined as petitioners in this proceeding
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
`
`1
`
`
`
`Claims 1-2 and 4 are unpatentable under Yamazaki-based grounds 1-3
`Claims 1 and 3-5 are unpatentable under Weldy-based grounds 4-6
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`2
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`2
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`(’289 Patent, claim 1) APPL‐1001, 10:38‐58.
`
`
`
`Claims 1-2 and 4 are unpatentable under Yamazaki-based grounds 1-3
`
`(Yamazaki) APPL‐1005, Fig. 1, annotated; Petition at 25;
`Reply at 16.
`
`(Yamazaki) APPL‐1005, Fig. 3, annotated including red and
`yellow highlights; Reply at 12; see also Petition at 36.
`
`(Yamazaki) APPL‐1005, Fig. 2, annotated; Petition at 25;
`Reply at 17.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Yamazaki) APPL‐1005, Fig. 4, annotated; Petition at 35.
`APPL-1023
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`3
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`3
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`Claims 1 and 3-5 are unpatentable under Weldy-based grounds 4-6
`
`(Weldy) APPL‐1007, Fig. 1b, annotated; Petition, at 74
`
`(Weldy) APPL‐1007, Fig. 2, annotated; Petition at 73.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Weldy) APPL‐1007, Fig. 3, annotated; Petition at 69, 75.
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`APPL-1023
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`4
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`4
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`
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`Grounds
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`Claims
`
`Basis
`
`1‐2
`1‐2
`4
`
`1, 3
`
`4
`
`5
`
`Anticipated under §102(b) by Yamazaki
`Obvious under §103(a) over Yamazaki
`Obvious under §103(a) over Yamazaki in
`view of Mansoorian
`Obvious under §103(a) over Weldy, Denyer,
`and Nagumo
`Obvious under §103(a) over Weldy in view of
`Denyer, Nagumo, and Mansoorian
`Obvious under § 103(a) over Weldy in view
`of Denyer, Nagumo, and Ikeda
`
`Ground
`No.
`1
`2
`3
`
`4
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`5
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`6
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`Petition at 15‐16.
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`APPL-1023
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`5
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`5
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`
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Grounds 1-3: Patent Owner’s non-enabling disclosure
`arguments are without merits.
`• Grounds 4-6: Patent Owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`6
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`6
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Grounds 1-3: Patent Owner’s non-enabling disclosure
`arguments are without merits.
`• Grounds 4-6: Patent Owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`7
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`7
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`Claim construction – “[a first and a second image sensor] closely
`positioned with respect to a common plane”
`Petitioner
`Patent Owner
`no construction necessary
`
`Response at 13.
`
`...
`
`...
`
`(’289 Patent) APPL‐1001, 8:24‐37.
`
`Reply at 1‐2.
`
`PO’s construction
`•
`does not overcome the grounds.
`Reply at 1‐2.
`•
`imports unsupported limitations.
`Reply at 3.
`•
`not supported by the specification.
`Reply at 3.
`•
`not supported by its own expert’s testimony.
`Reply at 4‐5.
`•
`improperly injects functional requirements that are
`redundant and unnecessary.
`Reply at 4.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Castleman Depo) APPL‐1019, 106;
`Reply at 4‐5.
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`APPL-1023
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`8
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`8
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`Claim construction – “producing a resultant digital image from said
`first digital image enhanced with said second digital image”
`Petitioner
`Patent Owner
`no construction necessary
`
`Reply at 5.
`PO’s construction is not supported by its own expert’s definition.
`…
`
`(Castleman Book) APPL‐1018, 606; Reply at 6.
`PO’s new arguments in Sur‐Reply:
`
`Response at 16.
`
`…
`
`…
`
`(Castleman Depo) APPL‐1019, 21; Reply at 6‐7.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Sur‐Reply at 5.
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`APPL-1023
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`9
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`9
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`
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Grounds 1-3: Patent Owner’s non-enabling disclosure
`arguments are without merits.
`• Grounds 4-6: Patent Owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`10
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`10
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`
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`Element [1.1]: Yamazaki discloses image sensors “closely
`positioned with respect to a common plane”
`PO does not dispute that Yamazaki teaches image sensors positioned at the same plane.
`
`(Yamazaki) APPL‐1005, 3:53‐56; Petition at 24.
`
`(Bovik) APPL‐1003, ¶79 ; Petition at 24.
`
`(Yamazaki) APPL‐1005, FIGS. 1‐2, annotated;
`Petition at 24‐25; Reply at 16‐17.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`11
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`11
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`Element [1.1]: Yamazaki discloses this limitation even under PO’s
`incorrect construction
`
`Reply at 18 (citing (Bovik) APPL‐1017, ¶23).
`
`(Yamazaki) APPL‐1005, 4:13‐21; Reply at 17.
`
`(Bovik) APPL‐1003, ¶79 ; Petition at 24.
`
`(Yamazaki) APPL‐1005, FIG. 3, annotated; Reply at 14.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`12
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`12
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`Element [1.7]: Yamazaki discloses “enhanced with,” even under
`PO’s incorrect construction
`
`Yamazaki teaches modifying/improving resolution and
`resolving power of a digital image.
`
`PO and its expert agree that resolution enhancement
`is image enhancement.
`
`Sur‐Reply at 5;
`see also EX2001, ¶24.
`
`Reply at 13.
`Resolution and resolving power are qualities of a digital
`image.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Reply at 14.
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`(Castleman Depo) APPL‐1019, 19; Reply at 12.
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`APPL-1023
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`13
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`13
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`
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Grounds 1-3: Patent Owner’s non-enabling disclosure
`arguments are without merits.
`• Grounds 4-6: Patent owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`14
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`14
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`Obviousness Grounds 2-3:
`PO’s non-enabling disclosure arguments are irrelevant
`
`Reply at 20.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`15
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`15
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`Anticipation Ground 1: PO’s non-enabling disclosure arguments
`seek to import non-existent requirements
`
`PO’s arguments, including new arguments in Sur‐
`Reply
`•
`are based on conclusory statements from its
`expert without any support.
`import requirements not in either Yamazaki or
`the ’289 Patent.
`
`•
`
`Reply at 18‐19.
`
`PO does not dispute that Yamazaki is
`enabling at least for sensors having pixel
`dimensions greater than 20 microns.
`See Sur‐Reply at 12.
`
`Merely discussion in
`background of Yamazaki: “The
`commercially available image
`sensor devices generally have
`about 400,000 pixels.”
`(Yamazaki) APPL‐1005, 1:25‐26.
`
`Not required by Yamazaki
`or by the ’289 Patent.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Sur‐Reply at 12.
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`APPL-1023
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`16
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`16
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`Anticipation Ground 1: Yamazaki is presumptively enabling
`
`PO fails to rebut the enabling disclosure presumption of Yamazaki.
`
`Reply at 18.
`
`(Yamazaki) APPL‐1005, 1:52‐65; Reply at 19.
`
`(Bovik) APPL‐1017, ¶26; Reply at 19‐20.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Yamada) APPL‐1022, FIG. 9, 1:23‐27; Reply at 19.
`
`(Nagumo) APPL‐1009,
`FIG. 1; Reply at 19.
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`APPL-1023
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`17
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`17
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Grounds 1-3: Patent Owner’s non-enabling disclosure
`arguments are without merits.
`• Grounds 4-6: Patent owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`18
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`18
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`PO fails to demonstrate diligence
`
`Reply at 24‐25.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`19
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`19
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`PO fails to establish prior conception
`
`Reply at 22‐23.
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`Reply at 22.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Reply at 23.
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`APPL-1023
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`20
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`20
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`PO cannot avoid the corroboration requirement
`by simply labeling Exhibit 2007 a “physical exhibit.”
`• Mahurkar relied by PO does not stand for the proposition that an inventor document does
`not need corroboration.
`Motion to Exclude at 8‐9.
`Exhibit 2007 is not reliable and should be excluded.
`Motion to Exclude at 8‐11.
`Even if admitted, Exhibit 2007 should be given no weight.
`Reply at 22‐23.
`
`•
`•
`
`Motion to Exclude at 8‐9.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Reply 23.
`21
`APPL-1023
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`21
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`Discussion Summary
`
`• Claim Construction
`• Grounds 1-3: Yamazaki discloses “producing a resultant
`digital image” and image sensors “closely positioned with
`respect to a common plane.”
`• Ground 1: Patent Owner fails to prove that Yamazaki is
`non-enabling for anticipation.
`• Grounds 4-6: Patent owner does not meet its burden to
`swear behind Weldy.
`• Grounds 4-6: A POSITA would have combined Weldy with
`Denyer.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`22
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`22
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`Weldy itself suggests image sensors closely positioned with
`respect to a common plane
`
`Petition at 59.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Weldy) APPL‐1007, FIG. 1b; Petition at 59.
`23
`APPL-1023
`23
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`Petitioner explains why and how to combine Weldy and Denyer
`
`Petition at 60.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Petition at 61.
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`APPL-1023
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`24
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`24
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`PO’s no-combination arguments mischaracterize Weldy
`
`PO’s mischaracterization of Weldy is
`•
`based on multiple incorrect assumptions.
`•
`contradictory to testimony of PO’s expert.
`
`None of these assumptions are proper based on
`the actual disclosure of Weldy.
`
`Reply at 27‐28.
`
`(Bovik) APPL‐1017, ¶29; Reply at 27‐28.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Castleman Depo) APPL‐1019, 129; Reply at 28.
`
`(Bovik) APPL‐1017, ¶29; Reply at 29.
`25
`APPL-1023
`25
`
`
`
`PO’s no-combination arguments
`incorrectly require bodily incorporation
`
`PO’s arguments incorrectly require bodily
`incorporation of a single‐chip sensor array
`of Denyer.
`
`PO ignores Petitioner’s evidence explaining how
`and why to combine Denyer’s teachings with
`Weldy.
`
`Response at 27‐28.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Reply at 27‐28.
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`Petition at 56.
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`APPL-1023
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`26
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`26
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`Further Questions?
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`27
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`27
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`Backup
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`28
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`28
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`Element [1.1]: Yamazaki discloses image sensors “closely
`positioned with respect to a common plane.”
`
`PO’s new Sur‐Reply arguments regarding Yamazaki’s drawings fail.
`
`Sur‐reply at 10.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`29
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`29
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`Element [1.7]: PO fails to rebut that Yamazaki’s image enhancement is similar
`to image enhancement example provided by PO’s expert.
`Similarly, Yamazaki teaches combining pixels
`of first and second digital images to generate
`a high resolution image.
`
`Patent Owner’s expert provides image fusion
`from his textbook as an example of image
`enhancement.
`
`APPL‐1018 at 347, FIG. 14‐36,
`annotated including red and yellow highlights; Reply at 11.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Yamazaki) APPL‐1005, Fig. 3, annotated including red and
`yellow highlights; Reply at 12.
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`APPL-1023
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`30
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`30
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`
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`Element [1.7]: PO mischaracterizes Yamazaki’s digital image
`processor as “just copy[ing].”
`
`Response at 19.
`Sur‐Reply at 9.
`Yamazaki’s digital image processor (image combination processing circuit 54) does more
`than “just copy[ing] … into the same memory array.”
`
`(Yamazaki) APPL‐1005, Fig. 4, annotated; Petition at 35.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`Reply at 13.
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`APPL-1023
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`31
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`31
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`
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`PO fails to demonstrate diligence:
`Spero, cited by, PO is inapposite
`Paragraph of Spero cited by PO is regarding using a
`draft application to establish conception, not to
`establish constructive reduction to practice.
`
`PO’s new argument in Sur‐Reply
`misrepresents Spero.
`
`The board's opinion with respect to the issue of
`conception appears to us to be inconsistent with its
`decision on the issue of constructive reduction to
`practice. Briefly, what the board seems to be holding is
`that identical disclosures may be sufficient to establish a
`constructive reduction to practice when present in a filed
`application but are inadequate to establish a date of
`conception of the same invention when present in an
`unfiled draft of the same application.
`
`[Paragraph Cited by PO]
`
`As evidence of conception, the working draft of the
`Spero parent application seems to us to be probative of
`Spero's conception of the invention in issue and, as such,
`may corroborate the other evidence on behalf of Spero.
`
`Sur‐Reply at 19‐20.
`
`Spero, 377 F.2d at 659‐660.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`32
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`32
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`PO’s opposition to motion to exclude is based on new attorney
`arguments
`
`Opposition to motion to exclude at 3.
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`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`APPL-1023
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`33
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`33
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`Opposition to motion to exclude at 10.
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`
`
`Weldy discloses “closely positioned with respect to a common
`plane” even under PO’s incorrect construction.
`PO does not dispute that Weldy teaches
`Weldy teaches two image sensors closed positioned in
`producing an enhanced image.
`a compact digital camera.
`Petition at 59.
`Petition at 69; Reply at 26‐27.
`
`(Weldy) APPL‐1007, FIG. 1b;
`Petition at 59.
`
`PO’s experts agreed Weldy discloses registration.
`
`(Weldy) APPL‐1007, Fig. 3, annotated; Petition at 69, 75.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`(Castleman Depo) APPL‐
`1019, 131; Reply at 27.
`
`APPL-1023
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`34
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`34
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