`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Paper 15
`
`
`APPLE INC.,
`Petitioner
`v.
`YU ET AL.
`Patent Owner
`———————
`
`IPR2019-01258
`U.S. Patent 6,611,289
`_______________
`
`
`PETITIONER’S REPLY
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`Table of Contents
`
`I. 
`II. 
`
`C. 
`
`Introduction ...................................................................................................... 1 
`Claim Construction .......................................................................................... 1 
`A. 
`“closely positioned with respect to a common plane” (claim 1) .......... 1 
`B. 
`“producing a resultant digital image from said first digital image
`enhanced with said second digital image” (claim 1) ............................. 5 
`“image sensor sensitive to [a/said] full region of visible color
`spectrum” (claims 1, 2, and 3) and “image sensor sensitive to a
`selected range of said full region of visible color spectrum”
`(claim 3) ................................................................................................ 8 
`III.  Grounds 1-3: Claims 1-2 are Anticipated by and Rendered Obvious over
`Yamazaki, and Claim 4 is Rendered Obvious over Yamazaki and
`Mansoorian ...................................................................................................... 8 
`A.  Yamazaki discloses “producing a resultant digital image from said
`first digital image enhanced with said second digital image.” .............. 8 
`Yamazaki discloses first and second image sensors that are “closely
`positioned with respect to a common plane.” ..................................... 15 
`Yamazaki provides an enabling disclosure for anticipating claims 1
`and 2 under Ground 1. ......................................................................... 18 
`IV.  Patent Owner Does Not Meet its Burden to Swear Behind Weldy. .............. 20 
`A. 
`Patent Owner Fails to Establish Prior Conception. ............................. 21 
`B. 
`Patent Owner Fails to Demonstrate Reasonably Continuous
`Diligence. ............................................................................................ 24 
`V.  Grounds 4-6: Claims 1-5 are Obvious over Weldy, Denyer, Nagumo,
`Mansoorian, and/or Ikeda. ............................................................................. 25 
`A.  A POSITA Would Have Combined Weldy with Denyer. .................. 25 
`VI.  Conclusion ..................................................................................................... 30 
`VII.  Certificate of Word Count ............................................................................. 31 
`CERTIFICATE OF SERVICE ............................................................................ 32 
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`B. 
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`C. 
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`PETITIONER’S EXHIBIT LIST
`Updated: July 28, 2020
`
`APPL-1001
`APPL-1002
`APPL-1003
`APPL-1004
`APPL-1005
`APPL-1006
`APPL-1007
`
`APPL-1008
`
`APPL-1009
`APPL-1010
`APPL-1011
`APPL-1012
`APPL-1013
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`APPL-1014
`APPL-1015
`APPL-1016
`
`APPL-1017
`(New)
`
`
`
`U.S. Patent No. 6,611,289 to Yu et al. (the “’289 Patent”)
`Prosecution File History of the ’289 Patent (the “’769 App”)
`Declaration of Dr. Alan C. Bovik
`CV of Dr. Alan C. Bovik
`U.S. Patent No. 5,694,165 to Yamazaki et al. (“Yamazaki”)
`U.S. Patent No. 6,400,824 to Mansoorian et al. (“Mansoorian”)
`EP Patent Application Publication EP0858208A1 to Weldy et
`al. (“Weldy”)
`PCT Patent Application Publication WO 93/11631 to Denyer
`(“Denyer”)
`U.S. Patent No. 4,506,294 to Nagumo (“Nagumo”)
`U.S. Patent No. 5,801,773 to Ikeda (“Ikeda”)
`U.S. Patent No. 4,642,679 to Nagano (“Nagano”)
`U.S. Patent No. 4,716,456 to Hosaka (“Hosaka”)
`“CCD arrays, cameras, and displays,” 2nd edition, 1998
`(“Holst”)
`U.S. Patent No. 3,971,065 to Bayer (“Bayer”)
`U.S. Patent No. 6,693,666 to Baker et al. (“Baker”)
`Joint Claim Construction and Prehearing Statement (“JCCS”),
`Yu et al. v. Apple Inc., Case No. 3-18-cv-06181 (N.D. Cal.),
`filed May 10, 2019.
`Supporting Declaration of Dr. Alan Bovik, under 37 C.F.R. §
`1.68 (“Bovik Supp.”)
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`APPL-1018
`(New)
`APPL-1019
`(New)
`APPL-1020
`(New)
`APPL-1021
`(New)
`APPL-1022
`(New)
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`Petitioner’s Reply
`
`IPR2019-01258 (Patent No. 6,611,289)
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`Kenneth R. Castleman, Digital Image Processing, 1996
`(“Castleman Book”)
`Transcript of Deposition of Dr. Kenneth R. Castleman, taken
`July 10, 2020 (“Castleman Deposition”)
`Transcript of Deposition of Dr. Yanbin Yu, taken July 20,
`2020 (“Yu Deposition”)
`Transcript of Deposition of Dr. Zhongxuan Zhang, taken July
`20, 2020 (“Zhang Deposition”)
`U.S. Patent No. 5,754,226 to Yamada et al. (“Yamada”)
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`I.
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`Introduction
`For the reasons discussed in the Petition and elaborated below, the
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`challenged claims of the ’289 Patent are unpatentable. Patent Owner repeatedly
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`seeks to import extraneous limitations into the claims in an effort to overcome
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`clear disclosures of the actual limitations in the grounds instituted for trial. In
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`addition, Patent Owner seeks to antedate a Weldy-based subset of the instituted
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`grounds, but fails to prove the corroborated conception and diligence that would be
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`required to swear behind Weldy.
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`II. Claim Construction
`A. “closely positioned with respect to a common plane” (claim 1)
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`The Board need not construe this term to reflect a language difference
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`between “closely positioned with respect to a common plane” in the challenged
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`claims and “closely positioned in a common plane” in claims 26-31, as requested by
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`Patent Owner. See Resp., 13; (APPL-1017), ¶¶6-7. Even if Patent Owner’s
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`proposed construction using “projections of the image sensors” terminology reflected
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`a claim language difference between “in” and “with respect to”—which it does
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`not—the proposed construction is unnecessary because it does not overcome the
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`invalidity of the challenged claims under the Petitioner’s grounds. Each of the
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`Petitioner’s grounds include image sensors closely positioned in a common plane
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`(Pet., 24-26, 59-61; see also III.B and V.A below), which as Patent Owner’s expert
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`admitted, are closely positioned with respect to a common plane:
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`Q. So if two image centers are closely positioned in a common plane,
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`they are closely positioned with respect to a common plane, correct?
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`A. They would be. They would be closely positioned with respect to,
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`for example, the common plane that they are positioned in.
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`(APPL-1019), 101.
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`Further, the term requires no construction because it is used according to its
`
`plain meaning, and would be readily understood by a POSITA1 at the time of the
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`invention and in the context of the entire patent disclosure. (APPL-1017), ¶3.
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`1 Patent Owner proposes a different POSITA definition with a higher level of skill,
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`which requires “at least a master’s degree in electrical engineering or applied
`
`physics and approximately three to five years of experience in the fields of digital
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`image processing and optics.” (Resp., 11). While Petitioner disagrees with Patent
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`Owner’s definition, the Board does not need to resolve the difference because
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`Patent Owner has not shown that its different standard would make any difference
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`in any issue in dispute in this proceeding. To the extent that the Board adopts Patent
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`Owner’s definition of a POSITA with a higher level of skill, such an adoption does
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`not materially change Petitioner’s analysis. (APPL-1017), ¶2.
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`Here, no party contends that an exception to the plain-meaning rule applies. See
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`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
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`(“There are only two exceptions to this general rule: 1) when a patentee sets out a
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`definition and acts as his own lexicographer, or 2) when the patentee disavows the full
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`scope of a claim term either in the specification or during prosecution.”). This claim
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`term is used according to its plain meaning, and no party contends that the patentee
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`disavowed the full scope of the claim term. The specification’s cursory discussion of
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`this feature does not impose any different meaning (see, e.g., (APPL-1001), 6:12-26,
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`8:30-33), and a POSITA reading the claim language in the context of the specification
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`would have readily understood it. (APPL-1017), ¶3.
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`The Board should reject Patent Owner’s proposed construction because it
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`imports unsupported limitations into the claims. The claim term does not recite
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`“projections,” “same reference point,” “enable registration,” or “enable
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`enhancement” as requested by Patent Owner’s proposed construction. It would
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`therefore be improper to read such limitations into the claims. See Superguide
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`Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“it is
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`important not to import into a claim limitations that are not part of the claim”). Those
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`unclaimed concepts are not required by the surrounding language of the claims or any
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`disclaimers or lexicography in the specification. (APPL-1017), ¶4.
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`Furthermore, Patent Owner’s improper injection of functional requirements that
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`the two image sensors are positioned “to enable enhancement” is redundant and
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`unnecessary, because the claims separately recite an “enhance” function as part of
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`their “digital image processor” element. See (APPL-1001), claim 1; (APPL-1017),
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`¶5. Additionally, Patent Owner’s injection of the “to enable registration” requirement
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`to “closely positioned” image sensors relies on a single type of registration, window-
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`based registration, described in ’289 Patent. Resp. 15. However, as Patent Owner’s
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`own expert admitted at deposition, there are registration methods (e.g., edge-based
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`registration) that do not require using windows of pixels and “could work in cases of a
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`large degree of misalignment.” (APPL-1019), 113.
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`Moreover, contrary to Patent Owner’s proposed construction requirement of
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`“positioned sufficiently close to one another to enable registration,” (Resp. 13), Patent
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`Owner’s own expert admitted at deposition that the claim term “only addresses the
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`image sensors” and “doesn’t require anything except that”:
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`Q. So claim one requires the first and the second image sensor closely
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`positioned with respect to a common plane. Does that language
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`require image registration that all objects and images are registered?
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`[Objection omitted]
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`A. That language doesn’t require anything, except that the, uh, first
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`and second image sensors are closely positioned with respect to a
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`common plane. This element of the claim only addresses the image
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`sensors and not the registration.
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`(APPL-1019), 106; see also, id., 107 (Dr. Castleman stating that the first element of
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`claim 1 “does not address or require image registration.”).
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`B. “producing a resultant digital image from said first digital image
`enhanced with said second digital image” (claim 1)
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`It is not necessary to construe this term, because Petitioner’s Yamazaki
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`grounds (the only grounds for which Patent Owner alleged that the term was not
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`disclosed, see Resp., 18-19), disclose the limitation even under Patent Owner’s
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`incorrect construction. (APPL-1017), ¶¶ 8-13. As explained in detail at III.A
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`below, Yamazaki discloses this limitation even under Patent Owner’s construction
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`because Yamazaki’s image combination processing circuit 54 generates the
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`resultant digital image (enhanced image) by modifying the qualities of the first
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`digital image (e.g., doubling the resolution and resolving power of the first digital
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`image in the horizontal direction) using the second digital image. (APPL-1005),
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`FIG. 3; (APPL-1017), ¶8.
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`Further, the term requires no construction because it is used according to its
`
`plain meaning, and a POSITA reading the claim language in the context of the
`
`specification would have readily understood this claim language. (APPL-1017), ¶9.
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`Here, no party contends that an exception to the plain-meaning rule applies. See
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`Thorner, 669 F.3d at 1365.
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`The Board should reject Patent Owner’s construction because Patent Owner
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`seeks to import into the claim the unsupported limitation of “modifying the qualities”
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`of the first digital image using the second digital image. Resp., 16. The claim term
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`does not recite “modifying” or “qualities,” and nothing in the specification or
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`claims requires that the only way to achieve enhancement is by “modifying
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`qualities.” It would therefore be improper to read such limitations into the claims.
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`See Superguide, 358 F.3d at 875; (APPL-1017), ¶10. While Patent Owner and its
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`expert allege that the “’289 Patent makes clear that image enhancement involves
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`modifying the qualities of a first image using a second image,” they fail to provide
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`any citation to the ’289 Patent using the terms “modifying” or “qualities.” See Resp.
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`16 citing EX.2001, ¶¶ 28-31.
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`Indeed, Patent Owner’s narrow construction is not even supported by its
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`own expert’s definitions of image enhancement, made both at the deposition (for
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`this proceeding) and prior to the ’289 patent (not for purposes of litigation). Dr.
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`Castleman’s definitions of image enhancement do not require either “modifying
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`qualities” or “modifying the pixel values” as would be required by the Patent
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`Owner’s construction. See, e.g., (APPL-1019), Castleman Deposition, 21 (Dr.
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`Castleman stating during deposition, “A process designed to improve the
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`appearance of the digital image would normally fall under the heading of image
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`enhancement.”); (APPL-1018), 606 (defining image enhancement as “any process
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`intended to improve the visual appearance of an image”); (APPL-1017), ¶12.
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`Moreover, Dr. Castleman testified that, to the contrary, image enhancement
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`according to the challenged claims includes functionality such as image fusion
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`where pixels from two images are combined into one image, which does not
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`require “modifying the pixel values” of those two images as alleged in Patent
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`Owner’s proposed construction. See (APPL-1019), 36-37; (APPL-1018), 345-347.
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`Finally, in attempting to distinguish the prior art on the basis of this term,
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`Patent Owner interprets and applies the term in a manner that adds an implicit
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`requirement unrecited in the claims or even its own construction—that “a POSITA
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`would understand that enhancing one image with another necessarily involves
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`modifying the pixel values of precisely aligned (as opposed to precisely offset)
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`images to achieve some desired effect such as improved image quality.” Resp., 2
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`(emphasis original). These requirements of “modifying the pixel values” and that
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`the images be “precisely aligned” are not supported by the claim term, specification,
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`or the surrounding language of the claims, and Patent Owner neither cites nor
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`provides any support for importing these requirements. See Resp., 2; (APPL-
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`1017), ¶11.
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`C. “image sensor sensitive to [a/said] full region of visible color
`spectrum” (claims 1, 2, and 3) and “image sensor sensitive to a selected
`range of said full region of visible color spectrum” (claim 3)
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`The Board did not construe these two claim terms, which appear in claims 1,
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`2, and 3. Institution Decision, 6-8. Patent Owner does not dispute that the prior art
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`discloses these two claim limitations, and agrees that “construction of these terms
`
`is not necessary to resolve the current controversy.” Resp., 12. Accordingly, these
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`two terms are not in dispute and do not require construction.
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`III. Grounds 1-3: Claims 1-2 are Anticipated by and Rendered Obvious
`over Yamazaki, and Claim 4 is Rendered Obvious over Yamazaki and
`Mansoorian
`A. Yamazaki discloses “producing a resultant digital image from said first
`digital image enhanced with said second digital image.”
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`First, Patent Owner’s argument that Yamazaki does not disclose “producing
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`a resultant digital image from said first digital image enhanced with said second
`
`digital image” should be rejected because it depends on its incorrect construction.
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`Patent Owner does not otherwise contest that Yamazaki discloses this limitation.
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`See Resp., 2, 13-16, 18-19; III.B. Specifically, Patent Owner argues, based on its
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`incorrect construction, that Yamazaki does not disclose the limitation because “a
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`POSITA would understand that enhancing an image necessarily entails modifying
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`the qualities of the image.” Resp., 19.
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`Patent Owner also argues that “enhancing one image with another
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`necessarily involves modifying the pixel values of precisely aligned (as opposed to
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`precisely offset) images to achieve some desired effect such as improved image
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`quality.” Resp., 2. As discussed above at II.B, Patent Owner’s arguments fail
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`because they rely on an unduly narrow claim construction; the claim language does
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`not require “modifying the pixel values” and “precisely aligned” images. A
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`POSITA would have understood that two images with a precise offset (e.g., with a
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`half-pixel offset as discussed in Yamazaki) are aligned, and image enhancement
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`can be performed between those images with a precise offset. (APPL-1017), ¶16.
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`Second, testimony of Patent Owner’s own expert supports that Yamazaki
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`discloses this limitation under its plain and ordinary meaning. During his
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`deposition, Dr. Castleman provided an example from his textbook (APPL-1018)
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`where image fusion is image enhancement:
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`Q. Can you give some examples where image fusion is image
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`enhancement?
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`[objection omitted]
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`A. Yes, I can. In my 1996 book I had an example of image fusion
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`where two images were taken of a scene and some of the objects in
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`the scene were at different distances from the camera.
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`…
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`The title of the book is Digital Image Processing, Author, Kenneth R.
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`Castleman, published by Prentice-Hall, ISBN 0-13-211467-4.
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`…
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`Q. Please identify the page number of the textbook just identified that
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`describes image fusion.
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`[objection omitted]
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`A. Page No. 347 – uh, 346 and 347.
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`(APPL-1019), 36-37.
`
`As shown in annotated FIG. 14-36 on page 347 of the Castleman
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`Book below, in that example, “[o]ne of the images was taken with the nearer
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`objects in focus and the other image was taken with the more distant object
`
`in focus,” and pixels of objects in focus in each image were selected and
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`combined “to form an image where both of the objects were in focus.”
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`(APPL-1019), 36-37; (APPL-1018), 345-347; (APPL-1017), ¶14.
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`(APPL-1018) at 347, FIG. 14-36,
`annotated including red and yellow highlights
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`Similarly, as shown in annotated FIG. 3 of Yamazaki below, Yamazaki
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`teaches combining pixels of first and second digital images to form a resultant
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`image. See Resp., 2 (Patent Owner admitting that Yamazaki “creat[es] a
`
`composite image by stitching together two … images … to create a combined
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`image.”); (APPL-1017), ¶ 15. The resultant image in Yamazaki has improved
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`resolving power/sharpness than the first digital image. See Id. (Patent Owner
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`admitting that Yamazaki will “create a combined image having a resolution equal
`
`to the sum of the pixels of each individual image.”). As such, Yamazaki teaches
`
`“producing a resultant digital image from said first digital image enhanced with
`
`said second digital image” as claimed. (APPL-1017), ¶15; see also (APPL-1019),
`
`19, 34 (Patent Owner’s own expert admitting that an “example of [image
`
`enhancement] is sharpening,” and that “if the sharpening is done for the purpose of
`
`making it look better, [] then it would fall in the heading of image enhancement.”).
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`(APPL-1005), Yamazaki, FIG. 3
`annotated including red and yellow highlights
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`Third, Yamazaki discloses this limitation even under Patent Owner’s
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`incorrect construction importing a requirement of “modifying qualities” of the first
`
`digital image using the second digital image. (APPL-1017), ¶17. Patent Owner
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`mischaracterizes Yamazaki as “essentially just cop[ying] the two unaltered images
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`produced by these sensors into the same memory array.” However, a POSITA
`
`would have understood that in embodiment 1 as shown in annotated FIG. 3 of
`
`Yamazaki below, Yamazaki’s image combination processing circuit 54 generates
`
`the resultant digital image (enhanced image) by modifying the qualities of the first
`
`digital image (e.g., by doubling the resolution and resolving power of the first
`
`digital image in the horizontal direction) using the second digital image. (APPL-
`
`1005), Yamazaki, FIG. 3; (APPL-1017), ¶17; see also (APPL-1022), Yamada,
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`FIG. 9, 1:11-44 (describing two images with a half-pixel horizontal offset that are
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`alternatively inserted for each pixel in a horizontal direction in a synthesis signal
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`processing section, thereby modifying the horizontal resolution of the first image
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`using the second image to generate an enhanced image with doubled horizontal
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`resolution).
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`(APPL-1005), Yamazaki, Fig. 3, annotated
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`Resolution and resolving power are qualities of a digital image, and
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`Yamazaki’s resultant image and its resolution and resolving power are enhanced
`
`from that provided by the first digital image using additional information from the
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`second digital image. (APPL-1017), ¶18.
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`Similarly, a POSITA would have understood that in embodiment 2 as shown
`
`in annotated FIG. 6 of Yamazaki below, Yamazaki’s image combination
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`processing circuit 54 generates the resultant digital image (enhanced image) by
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`modifying the qualities of the first digital image (e.g., resolution and resolving
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`power of the first digital image) using the second digital image. (APPL-1005),
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`Yamazaki, FIG. 3; (APPL-1017), ¶19; see also (APPL-1022), Yamada, FIG. 9,
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`1:11-44.
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`(APPL-1005), Yamazaki, Fig. 6, annotated
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`
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`B. Yamazaki discloses first and second image sensors that are “closely
`positioned with respect to a common plane.”
`
`First, Patent Owner’s argument that Yamazaki does not disclose “closely
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`positioned with respect to a common plane” should be rejected because it depends
`
`on its incorrect construction that would import extraneous requirements for
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`“projections of the image sensors from the same reference point onto a common
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`plane be closely positioned to each other to enable registration … and to enable
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`enhancement ….” See Resp., 22-24; III.A; (APPL-1017), ¶20.
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`Second, Patent Owner and its expert argue, without providing any support,
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`that Yamazaki’s configuration “includes shared lens components for directing light
`
`received from a scene towards both image sensors without the need for close
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`positioning of sensors within the meaning of the ’289 Patent,” and therefore,
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`Yamazaki does not teach this limitation. Resp., 23. However, as shown in
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`annotated FIGS. 1 and 2 below, Yamazaki discloses the limitation regardless of
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`whether its configuration has the “need” for closely positioning the image sensors.
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`(APPL-1017), ¶ 21.
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`(APPL-1005), Yamazaki, Fig. 1, annotated
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`Petitioner’s Reply
`IPR2019-01258 (Patent No. 6,611,289)
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`(APPL-1005), Yamazaki, Fig. 2, annotated
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`As shown in annotated FIG. 2 of Yamazaki above, a POSITA would have
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`understood that image sensors 31A and 31B are closely positioned in the common
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`plane because in Yamazaki, “with respect to the position of the image sensor
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`element 31A, the image sensor element 31B is positioned with a pixel
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`displacement by a half of the pixel width t in the horizontal (main scanning)
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`direction, and the images formed on said image sensor elements 31A, 31B are
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`combined by an image combination process circuit (not shown) to double the
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`resolving power in the horizontal direction.” (APPL-1005), Yamazaki, FIGS. 1-3,
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`4:13-20; (APPL-1017), ¶22. As such, Yamazaki teaches the limitation. (APPL-
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`1017), ¶22; (APPL-1019), 101 (Patent Owner’s expert testifying that if two image
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`sensors are closely positioned in a common plane, they would be closely positioned
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`with respect to a common plane).
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`Third, testimony of Patent Owner’s own expert supports that Yamazaki
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`discloses this limitation even under Patent Owner’s incorrect construction. (APPL-
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`1017), ¶ 23. Patent Owner’s expert testified that “to enable” under Patent Owner’s
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`proposed construction “means to make something possible.” (APPL-1019), 118.
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`Registration and enhancement are possible on Yamazaki’s first and second digital
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`images from image sensors 31A and 31B with half-pixel offset, and as such,
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`Yamazaki discloses this limitation even under Patent Owner’s construction.
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`(APPL-1017), ¶23.
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`C. Yamazaki provides an enabling disclosure for anticipating claims 1
`and 2 under Ground 1.
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`Both claimed and unclaimed materials disclosed in Yamazaki, a U.S. Patent,
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`“are presumptively enabling.” In re Antor Media Corp., 689 F.3d 1282, 1287
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`(Fed. Cir. 2012) (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
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`1313, 1355 (Fed. Cir. 2003)). That “presumption applies in the district court as
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`well as the PTO, placing the burden on the patentee to show that unclaimed
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`disclosures in a prior art patent are not enabling.” Id. at 1288.
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`For Ground 1, Patent Owner fails to prove that Yamazaki is non-enabling.
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`Patent Owner and its expert argue “Yamazaki does not provide an operable and
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`enabling disclosure of combining images to double the resolving power of image
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`sensors,” Resp., 20-21, but fail to provide citation to any supporting evidence of its
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`assertion that “a POSITA would understand that such precise alignment could not
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`be achieved during the manufacturing process, nor maintained after manufacturing
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`….” Resp., 22; (EX.2001), Castleman Declaration, ¶35.
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`To the contrary, it was well-known in the art how to achieve a half-pixel
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`alignment between two images sensors. (APPL-1017), ¶25. Yamazaki itself
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`describes prior art disclosing “the method by pixel displacement,” and provides
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`detailed explanation on how such pixel displacement is achieved, including, for
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`example, “an optical element for splitting the light beam coming from the object,
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`such as a dichroic prism or a half mirror, is provided at the image side of the image
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`taking optical system, and an image of a higher resolving power is obtained by
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`receiving the light beams split by said optical element, with plural solid-state area
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`sensors positioned with mutual displacement by a half of the pitch of the pixels or
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`less.” (APPL-1005), Yamazaki, 1:52-65. Indeed, relative position displacement,
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`including half-pixel displacement, was well-known in the art. See, e.g., (APPL-
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`1009), Nagumo, FIG. 1, 2:54-56, 1:28-29 (teaching “displacing the image on each
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`sensor by a predetermined distance in a given direction with respect to at least one
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`other of said sensors,” where the predetermined distance includes “one-half of the
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`alignment pitch L of the picture sensing units”); (APPL-1022), Yamada, FIG. 9,
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`1:10-44 (describing an imaging apparatus synthesizing images from a pair of
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`imaging plates with a half-pixel shift to generate an image with improved
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`resolution); (APPL-1017), ¶26. Accordingly, Yamazaki sufficiently describes the
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`claimed invention to have placed the public in possession of it, and provides an
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`enabling disclosure for anticipating claims 1 and 2 under Ground 1. Id. Patent
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`Owner ignores Yamazaki’s detailed description of the claimed invention including
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`how pixel displacement is achieved, and fails to overcome the presumption of
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`enablement.
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`Moreover, the enabling disclosure requirement applies only to anticipation,
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`not obviousness. See Amgen Inc, 314 F.3d at 1357 (“Under § 103 … a reference
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`need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed
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`therein”). As such, claims 1, 2, and 4 are rendered obvious by Yamazaki alone or
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`in combination with Mansoorian under Grounds 2 and 3, regardless of whether
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`Yamazaki provides an enabling disclosure (which it does).
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`IV. Patent Owner Does Not Meet its Burden to Swear Behind Weldy.
`Weldy is prior art. Patent Owner argues that it is not, but has not met its
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`burden to swear behind Weldy. Resp., 3-4, 26-27. Weldy’s August 12, 1998
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`publication date is more than five months before the January 15, 1999 filing date of
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`the ’289 Patent. Pet., 16; Resp. 26. Since Petitioner satisfied its initial burden of
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`production by presenting arguments that the claims are obvious in view of Weldy,
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`the burden of production shifted to Patent Owner to produce evidence that Weldy
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`is not prior art. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
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`1375, 1378-1380 (Fed. Cir. 2015).
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`Patent Owner’s sole basis for its swear-behind argument is declarations of
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`named inventors of the ’289 Patent, Yanbin Yu and Zhongxuan Zhang, and
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`accompanying exhibits. The accompanying exhibits consist of documents for
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`which any declared-to allegations of authenticity and dates necessarily rely on the
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`uncorroborated say-so of the inventors themselves. An inventor may, in theory,
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`“date his patentable invention back to the time of its conception, if he connects the
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`conception with its reduction to practice by reasonable diligence on his part, so that
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`they are substantially one continuous act.” Mahurkar v. C.R. Bard, Inc., 79 F.3d
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`1572, 1577 (Fed. Cir. 1996). Patent Owner’s record here, however, is insufficient
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`under Federal Circuit precedent to prove (1) alleged conception before August 12,
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`1998 and (2) reasonable diligence from August 11, 1998 through the January 15,
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`1999 filing date of the ’289 patent. Indeed, Patent Owner fails to meet its burden
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`of production, let alone persuasion.
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`A. Patent Owner Fails to Establish Prior Conception.
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`Conception is “the formation, in the mind of the inventor of a definite and
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`permanent idea of the complete and operative invention, as it is thereafter to be
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`applied in practice.” Kolcraft Enterprises v. Graco Children's Products, 927 F. 3d
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`1320, 1324 (Fed. Cir. 2019); Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir.
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`Petitioner’s Reply
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`IPR2019-01258 (Patent No. 6,611,289)
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`1985). A bald statement by an inventor that an idea is “jointly conceived” is not
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`sufficient (see Ex.2002, 4), since “[c]onception must be proved by
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`corroborating evidence which shows that the inventor disclosed to others his
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`‘completed thought expressed in such clear terms as to enable those skilled in the
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`art’ to make the invention.” Coleman at 359 (emphasis added). A party that seeks
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`to prove conception through an inventor's testimony must proffer evidence, “in
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`addition to [the inventor’s] own statements and documents,” corroborating the
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`inventor's testimony. Apator Miitors ApS v. Kamstrup A/S, 887 F. 3d 1293, 1995
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`(Fed. Cir. 2018) (quoting Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989)).
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`Her