Trials@uspto.gov
`571-272-7822
`
`
`Paper 6
`Entered: May 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`
`IPR2020-00179
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, WESLEY B. DERRICK, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 6
`Entered: May 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`
`IPR2020-00179
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, WESLEY B. DERRICK, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00179
`Patent 6,844,990 B2
`
`I. INTRODUCTION
`On November 27, 2019, LG Electronics Inc. (“Petitioner” or “LG
`Electronics”) filed a Petition requesting an inter partes review of claim 5
`(“the challenged claim”) of U.S. Patent No. 6,844,990 B2 (Ex. 1001,
`“the ’990 patent”). Paper 2 (“Pet.”). ImmerVision, Inc. (“Patent Owner” or
`“ImmerVision”) filed a Preliminary Response to the Petition. Paper 5
`(“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a). To institute an
`inter partes review, we must determine that the information presented in the
`Petition shows that there is “a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314(a). Applying that standard, for the reasons set forth below,
`we institute an inter partes review as to all grounds raised in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner LG Electronics Inc. identifies LG Electronics U.S.A., Inc.
`and LG Innotek Co. Ltd. as additional real parties-in-interest. Pet. 2. Patent
`Owner ImmerVision, Inc., identifies itself as the real party-in-interest.
`Paper 4, 2. The parties do not raise any issue about real parties-in-interest.
`B. Related Proceedings
`The parties identify two pending district court cases involving
`the ’990 patent as related matters: ImmerVision, Inc. v. LG Electronics
`U.S.A., Case No. 1-18-cv-01630 (D. Del.) and ImmerVision, Inc. v. LG
`Electronics U.S.A., Case No. 1-18-cv-01631 (D. Del.). Pet. 2; Paper 4, 2–3.
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`Petitioner concurrently filed another petition that challenges claim 21
`of the ’990 patent. See LG Electronics Inc. v. Immervision, Inc., IPR2020-
`00195, Paper 2.
`In addition, Petitioner states the ’990 patent: (1) was the subject of
`Ex Parte Reexamination Control No. 90/013,410; (2) was challenged in an
`inter partes proceeding, Panasonic System Networks Co., Ltd. v. 6115187
`CANADA INC., IPR2014-01438; and (3) was the subject of three other
`district court cases, now closed. See Pet. 2–3; see also Panasonic System
`Networks Co., Ltd. v. 6115187 CANADA INC., IPR2014-01438, Paper 11
`(PTAB Nov. 26, 2014) (terminating proceeding prior to institution following
`settlement).
`C. The ’990 Patent (Ex. 1001)
`The ’990 patent is titled “Method for Capturing and Displaying a
`Variable Resolution Digital Panoramic Image” and issued on Jan. 18, 2005,
`from an application filed on Nov. 12, 2003. Ex. 1001, code (22), (45), (54).
`The application for the ’990 patent is a continuation of application No.
`PCT/FR02/01588, filed on May 10, 2002, and claims priority to foreign
`application FR 01 06261, filed May 11, 2001. Id. at code (30), (63).
`The ’990 patent is directed to capturing a digital panoramic image that
`includes using a panoramic objective lens having “a distribution function of
`the image points that is not linear relative to the field angle of the object
`points of the panorama.” Id., Abstract. The image obtained using such a
`panoramic objective lens has at least one zone that is expanded and another
`zone that is compressed. Id. The patent further provides for correcting the
`non-linearity of the panoramic image initially obtained. Id.
`The ’990 patent was the subject of an ex parte reexamination. Id.
`at 25–27 (Ex Parte Reexamination Certificate (10588th)). The
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`Reexamination Request—Control No. 90/013,410—was filed November 26,
`2014. Id. at 25; Ex. 1003, 328–339 (“Request by Patent Owner for Ex Parte
`Reexamination of U.S. Patent No. 6,844,990”). Patent Owner cancelled,
`inter alia, claim 1 by way of preliminary amendment that accompanied its
`request for ex parte reexamination of claims 1–4, 6, 7, 10, 11, 15–20, 22, 23,
`and 25. See Pet. 17–18; Ex. 1003, 330, 341. The Patent Office granted
`Patent Owner’s request for reexamination of the identified claims. Ex. 1003,
`52–63. The Patent Office declined to reexamine claims 5, 8, 9, 12–14, 21,
`24, and 26 on the basis that “the requester did not request reexamination of
`. . . and did not assert the existence of a substantial new question of
`patentability for those claims.” Id. at 56 (citing 35 U.S.C. § 311(b)(2)). At
`the conclusion of the proceeding, the Patent Office issued an Ex Parte
`Reexamination Certificate cancelling claims 1, 6, 7, 17–20, 22, 23, and 25;
`determining claims 2–4, 10, and 15 to be patentable as amended;
`determining claims 11 and 16 dependent on an amended claim to be
`patentable; and adding and determining to be patentable new claims 27–47.
`Ex. 1001, 25–27; Ex. 1003, 1–3.
`D. Claimed Subject Matter
`Challenged claim 5 incorporates the limitations of cancelled claim 1,
`from which it depends. See MPEP § 2260.01 (“the content of the canceled
`base claim . . . [is] available to be read as part of the confirmed or allowed
`dependent claim”). Both claims are reproduced below.
`1. A method for capturing a digital panoramic image, by
`projecting a panorama onto an image sensor by means of a
`panoramic objective lens, the panoramic objective lens having
`an image point distribution function that is not linear relative to
`the field angle of object points of the panorama, the distribution
`function having a maximum divergence of at least ±10%
`compared to a linear distribution function, such that the
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`panoramic image obtained has at least one substantially
`compressed zone.
`Ex. 1001, 19:28–37.
`5. The method according to claim 1, wherein the objective lens
`compresses the center of the image and the edges of the image
`and expands an intermediate zone of the image located between
`the center and the edges of the image.
`Ex. 1001, 19:49–52.
`E. Evidence
`Petitioner relies upon the following prior art references in the asserted
`grounds of unpatentability:
`Reference
`US 5,861, 999 (“Tada”)
`
`Exhibit No.
`1007
`
`Date
`Jan. 19, 1999, filed
`Aug. 21, 1997
`Oct. 3, 2000, filed
`Apr. 28, 1999
`
`Nov. 11, 1997, filed
`Jun. 30, 1995
`
`US 6,128,145 (“Nagaoka”)
`
`US 5,686,957 (“Baker”)
`
`1004
`
`1005
`
`Petitioner also relies on the Declaration of Russell Chipman, Ph.D.
`(Ex. 1008).
`F. The Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claim is unpatentable based on
`the following grounds:
`Claim(s) Challenged
`5
`
`Reference(s)/Basis
`Tada
`
`35 U.S.C. §1
`103
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of 35 U.S.C. § 103.
`
`5
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`Patent 6,844,990 B2
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`Claim(s) Challenged
`5
`
`35 U.S.C. §1
`103
`
`Reference(s)/Basis
`Tada, Nagaoka
`
`5
`
`103
`
`Tada, Baker
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have had at least a bachelor’s degree in Physics, Optical Engineering, and/or
`Electrical Engineering and at least five years’ experience in developing and
`designing optical products or systems and have familiarity with image
`processing algorithms and optical design software.” Pet. 20 (citing Ex. 1008
`¶ 41).
`
`Patent Owner neither disputes Petitioner’s articulation of the level of
`ordinary skill in the art nor presents its own articulation of the level of skill
`in the art, stating that “[a]t this stage of the proceeding, . . . for purposes of
`[the] Preliminary Response, Patent Owner does not object to Petitioner’s
`proposed skill level.” Prelim. Resp. 16.
`On this record, we have no reason to fault Petitioner’s definition of
`the level of ordinary skill and, therefore, adopt it for the purposes of this
`Decision. We further note that the prior art itself demonstrates the level of
`skill in the art at the time of the invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on
`the level of skill in the art . . . [are not required] ‘where the prior art itself
`reflects an appropriate level and a need for testimony is not shown’”
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985))).
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`B. Claim Construction
`1. Standard of Construction
`For petitions filed on or after November 13, 2018, we apply the claim
`construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). 37 C.F.R. § 42.100(b) (2019).
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification
`is dispositive, and it is the single best guide to the meaning of a disputed
`term. Id. at 1315.
`Only those claim terms that are in controversy need to be construed
`and only to the extent necessary to resolve the controversy. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
`1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is
`not “directed to, or has been shown reasonably to affect, the determination
`of obviousness”).
`2. Proposed Constructions
`Petitioner proposes constructions for seven claim terms. See Pet. 21–
`25. Petitioner contends that “‘[p]anoramic objective lens’ should be
`construed to mean a super-wide or ultra-wide angle objective lens.” Id. at 21
`(citing Ex. 1001, 1:18–20; Ex. 1008 ¶ 44). Petitioner contends that “[o]bject
`points of the panorama’ should be construed as points of the object in the
`panorama being viewed by the lens.” Id. at 21–22 (citing Ex. 1001, 7:2–5,
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`Fig. 5; Ex. 1008 ¶ 52). Petitioner contends that “‘[i]mage point’ should be
`construed as a point of light projected by the lens onto an image plane, said
`light coming from the corresponding object point of a viewed object in the
`panorama.” Id. at 22 (citing Ex. 1001, 7:11–14, Fig. 5; Ex. 1008 ¶ 52).
`Petitioner contends that “‘[f]ield angle of object points’ should be construed
`as the angles of incident light rays passing through the object points and
`through the center of the panorama photographed, relative to the optical axis
`of the objective lens.” Id. at 23 (citing Ex. 1001, 2:18–22; Ex. 1008 ¶ 52).
`Petitioner contends that “maximum divergence” is defined by the ’990
`patent according to the formula “DIVmax %=[[dr(Pd)-
`dr(Pdl)]/[dr(Pdl)]]*100, in which dr(Pd) is the relative distance in relation to
`the center of the point of maximum divergence Pd, and dr(Pdl) is the relative
`distance in relation to the center of the corresponding point on the linear
`distribution line.” Id. at 23–24 (citing Ex. 1001, 8:57–65; Ex. 1008 ¶ 57).
`Petitioner contends that “[e]xpanded zone’ should be construed as the
`portion of the image point distribution function where the gradient is higher
`than the gradient of the linear distribution function.” Id. at 24 (citing
`Ex. 1001, 8:38–43, Fig. 9; Ex. 1008 ¶ 63). Petitioner contends that
`“[c]ompressed zone’ should be construed as the portion of the image point
`distribution function where the gradient is lower than the gradient of the
`linear distribution function.” Id. at 24–25 (citing Ex. 1001, 8:38–43, Fig. 9;
`Ex. 1008 ¶ 63).
`Patent Owner does not contest the proposed constructions of the claim
`terms at this stage of the proceeding, stating that “for purposes of this
`Preliminary Response, Patent Owner does not object to the definitions set
`out by Petitioner.” Prelim. Resp. 16.
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`Based on the current record, and for the purpose of this decision, we
`adopt the constructions set forth by Petitioner, because these appear
`reasonable and are not contested. Any further construction is not necessary
`at this time for the purpose of this decision.
`C. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103 if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) if in evidence, objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes
`review petitions to identify ‘with particularity . . . the evidence that supports
`the grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems,
`Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`(quoting 35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial
`petition identify ‘with particularity’ the evidence that supports the grounds
`for the challenge to each claim’”). This burden never shifts to Patent Owner.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`partes review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`D. Asserted Obviousness over Tada
`Petitioner challenges claim 5 as unpatentable for having been obvious
`over Tada. Pet. 29–52.
`1. Tada (Ex. 1007)
`Tada discloses a method for capturing a digital panoramic image,
`including by use of “a super wide angle lens system which can be used for a
`monitoring camera (CCTV) etc.” Ex. 1007, 1:7–9. Tada states that “[i]t is
`an object . . . to provide a retrofocus type super wide angle lens system . . .
`[having] an angle of view of approximately 120º to 140º.” Id. at 1:48–50.
`Tada identifies Figure 11 as “show[ing] a third embodiment of a super wide
`angle lens system.” Id. at 8:59–64; Fig. 11. The third embodiment, as
`depicted in Figure 11 below, “is substantially the same as the second
`embodiment,” depicted in Figure 6, which “is substantially the same as that
`of the first embodiment,” depicted in Figure 1. Id. at 6:2–3, 7:36–43, 8:58–
`62.
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`Tada’s Figure 11 (reproduced above) depicts the lens arrangement of a super
`wide angle lens system. Id. at 3:44–46, Fig. 11. The depicted super wide
`angle lens system consists of front lens group 10 and rear lens group 20. See
`id. at 6:4–5 (identifying elements in reference to Figure 1). Figure 11 also
`depicts features of a CCD2 (charge-coupled device) used to capture an
`image; element C refers to “a glass cover of the CCD” and “surface No. 15
`refers to the image pickup surface of the CCD.” See id. at 6:26–32
`(identifying elements in reference to Figure 1). Tada’s Figures 5 and 6
`disclose numerical data regarding the third embodiment, including “[t]he
`surface figure, paraxial spherical amount and aspherical amount of surface
`No. 3.” Id. at 8:63–9:57.
`
`
`2 Although neither Tada nor the Petitioner define “CCD,” we understand
`CCD to be a “charge-coupled device.”
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`2. Analysis
`Claim 5, which incorporates the limitations of cancelled claim 1 from
`which it depends, is directed to a method of capturing a digital panoramic
`image by use of a panoramic objective lens to project a panorama onto an
`image sensor. In general, claim 1 requires that the panoramic objective lens
`used to capture the image has a distribution function of the image points that
`is not linear to the field angle of the object points of the panorama, having a
`maximum divergence that is at least ±10% compared to a linear distribution
`function. Ex. 1001, 19:28–37. Claim 5 further requires that “the objective
`lens compresses the center of the image and edges of the image and expands
`an intermediate zone of the image located between the center and the edges
`of the image.” Id. at 19:49–52.
`a) Petitioner’s Contentions
`Petitioner contends that Tada discloses a method of capturing a digital
`panoramic image using a panoramic objective lens that compresses the
`center of the image and edges of the image and expands an intermediate
`zone of the image located between the center and edges of the image.
`Pet. 29–37. Petitioner relies on Tada’s third embodiment, as set forth in
`Figure 11 and Table 5, and calculations based on the disclosure for the
`distribution function of image points for different wavelengths of visible
`light. Id. at 31–37 (citing Ex. 1007, Fig. 11, Table 5). Petitioner further
`contends that the objective lens has a distribution function of image points
`that deviates from being linear to the field angle of the object points by an
`amount sufficient to meet the ±10% limitation of claim 1, and that, if not
`meeting the limitation outright, that it would have been obvious to a person
`of ordinary skill in the art to modify the lens system to increase the
`maximum deviation in the expansion zone in order to increase the resolution
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`of the acquired image. Id. at 37–46. Petitioner relies, in effect, on Tada’s
`third embodiment rendering the objective lens with the ±10% deviation
`limitation prima facie obvious on the basis that it would have been expected
`to have the same properties, and on the basis that the deviation amounts to
`nothing more than a result effective variable that is subject to routine
`optimization. Id.
`Petitioner addresses the limitations of base independent claim 1 and of
`claim 5 in turn.
`Petitioner contends that Tada teaches the recited “method for
`capturing a digital panoramic image by projecting a panorama onto an image
`sensor by means of a panoramic objective lens” in its disclosure of a super
`wide angle lens system for a monitoring CCTV camera, including the third
`embodiment depicted in Figure 11. See id. at 29–32 (citing Ex. 1007, 1:7–9,
`1:48–50, 6:2–5, 6:26–32, 7:36–43, 8:58–64, Fig. 11; Ex. 1008 ¶¶ 44–45, 47).
`Petitioner also contends that its expert, Dr. Chipman, “reconstructed” the
`third embodiment depicted in Figure 11 using the information from Table 5.
`Id. at 31–32 (citing Ex. 1008 ¶ 47); see Ex. 1008 ¶ 46.
`Petitioner contends that Tada teaches the recited “panoramic objective
`lens having an image point distribution function that is not linear relative to
`the field angle of object points of the panorama.” See Pet. 32–37 (citing
`Ex. 1007, 5:46–53, 9:1–24 (Table 5), Fig. 11; Ex. 1008 ¶¶ 49–54).
`Petitioner relies on Dr. Chipman’s testimony that Tada’s disclosure of
`“schematic views of the lens arrangements, diagrams of the aberrations,
`astigmatism and distortion experienced by the particular lens systems
`disclosed, and tables of measurements of the lens” allows “one of ordinary
`skill in the art to reconstruct the exact lens systems described in Tada.” Id.
`at 32; Ex. 1008 ¶ 49. In addition, Petitioner details the numerical data from
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`Table 5, and contends that a person of ordinary skill in the art “at the
`relevant time period would have used a [computer] program . . . to
`mathematically calculate the characteristics of the lens system to test and
`show how it will function by providing plots of the various characteristics of
`the lens system.” Pet. 33–34 (citing Ex. 1007, 5:46–53, 8:59–64, 9:1–24;
`Ex. 1008 ¶¶ 50–51). The data relied on includes W specified in Table 5 of
`Tada, the half angle field of view, indicating the angular extent from the
`optical axis of the lens of a scene that is imaged. See id. at 30–31, 35–36.
`The value for W in Table 5 is 58.5 degrees. Ex. 1007, 9:5.
`As to calculating lens system characteristics, Petitioner and
`Petitioner’s expert Dr. Chipman contend that a particular computer
`program—Code V software—“merely performs mathematical calculations
`applying well known principles of optics and physics” and that these well-
`known principles “have not changed in any material respects since at least
`the early 2000s.” Pet. 34; Ex. 1008 ¶ 51. Petitioner and Dr. Chipman
`further contend that the Code V program “has been around since at least the
`mid-1960’s and was capable of performing the analysis used herein by at
`least 1980.” Pet. 34; Ex. 1008 ¶ 51. Petitioner relies on Dr. Chipman’s
`calculations using the Code V software to model the lens system of Tada’s
`third embodiment (depicted in Figure 11) using the information from Tada’s
`Table 5. Pet. 34–37. Petitioner contends that a person of ordinary skill
`would have understood the recited lens system to be for use with a video
`camera and, thus, for the claim to be directed to visible light. Id. at 35
`(citing Ex. 1008 ¶ 52). Petitioner details that Dr. Chipman, using the
`definitions of “object points of the panorama,” “image point,” and “field
`angle of object points,” and the data from Table 5, “plotted the relative
`distance of image points produced by the lens system of the third
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`embodiment of Tada in relation to the field angle of the corresponding
`object point” for six different wavelengths of light representative of visible
`light—violet (380 nm, 400 nm), blue (450 nm), yellow (587 nm), and red
`(700 nm, 740 nm)—using the Code V program. Id. at 34–35 (citing
`Ex. 1008 ¶ 52; Ex. 1012, 3 (American Heritage Dictionary of Science
`definition of “visible light”)). Petitioner relies on these plots overlaid with a
`linear distribution and on the percent divergence calculated using the ’990
`patent’s DIVmax equation to illustrate that “the image point distribution
`function is not linear relative to the field angle of object points of the
`panorama. Id. at 35–36 (citing Ex. 1008 ¶¶ 52–53; Ex. 1013 (Code V
`analysis of Tada’s third embodiment)). The plot obtained for 380 nm
`illustrates the contended deviation.
`
`Reproduced above from page 36 of the Petition, the plot of the lens
`prescription, based on Table 5 and Figure 11, for 380 nm wavelength light
`illustrates the deviation from a linear distribution. Petitioner highlights, in
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`particular, that the slope of the image point distribution is less than that for a
`linear distribution over the lower object point field angles (orange) and the
`higher object point angles (green) and greater than that for a linear
`distribution over intermediate object point field angles (blue). Id. at 43–45.
`Petitioner contends that, “[a]s described in the ’990 patent, a higher gradient
`of the image point distribution function compared to the linear distribution
`function indicates an expansion of the image and a lower gradient means a
`compression of the image.” Id. at 44; Ex. 1001, 8:41–43; Ex. 1008 ¶ 63.
`Thus, Petitioner contends that Tada teaches the recited “panoramic
`objective lens having an image point distribution function that is not linear
`relative to the field angle of object points of the panorama.”
`Petitioner contends that Tada teaches, or renders obvious, “the
`distribution function having a maximum divergence of at least ±10%
`compared to a linear distribution function, such that the panoramic image
`obtained has at least one substantially expanded zone and at least one
`substantially compressed zone.” See Pet. 37–46. Petitioner relies on two
`theories for the maximum divergence of at least ±10% compared to a linear
`distribution. First, Petitioner contends that the maximum divergence value
`of Tada’s third embodiment itself establishes a prima facie case of
`obviousness because it is sufficiently close to ±10%. See id. at 37–41.
`Second, Petitioner contends that it would have been obvious to a person of
`ordinary skill in the art to modify Tada’s third embodiment lens system to
`increase the maximum deviation in the expansion zone in order to increase
`the resolution of the acquired image, including as a matter of routine
`optimization. Id. at 41–43. As to the obtained panoramic image having “at
`least one substantially expanded zone and at least one substantially
`compressed zone,” Petitioner relies, respectively, on the higher and lower
`
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`Patent 6,844,990 B2
`gradients of portions of the plot of the lens prescription, discussed above.
`Id. at 43–46.
`In arguing the disclosed maximum divergence value is sufficiently
`close to establish a prima facie case, Petitioner contends that the ’990 patent
`does not attribute any special characteristic to the 10% value, but rather sets
`forth that it “is sufficient ‘to obtain an expansion of the useful parts of the
`image . . . result[ing] in a clear increase in the number of pixels covered by
`the useful parts and a substantial improvement in the definition obtained.’”
`Id. at 37 (citing Ex. 1001, 9:7–12; Ex. 1008 ¶ 56). Petitioner further relies
`on the ’990 patent “describ[ing] the 10% value as a mere approximation”
`and that “such a maximum divergence value ‘on the order of 10% at least’
`merely needs to be higher than that due to the possible design errors in
`manufacturing errors . . . ‘which is of a few percent.’” Id. (citing Ex. 1001,
`9:2–6, 9:8; Ex. 1008 ¶ 56).
`Petitioner contends that its calculated plots for various wavelengths
`demonstrates that the third embodiment of Tada’s lens system meets, or
`renders obvious, the recited limitations as to the maximum divergence with
`respect to the linear distribution and the substantially expanded and
`compressed zones. Id. at 39–40. Petitioner relies on its calculations
`indicating, depending on the wavelength of visible light, a maximum
`divergence of -8.12% to -9.88% occurring at or near 25–28 degrees and of
`+0.37 to +1.44% occurring at or near 52–55 degrees. Id. at 38–39 (citing
`Ex. 1001, 8:57; Ex. 1008 ¶ 57). Petitioner highlights the maximum
`divergence of -9.88% at 27.6 degrees and of +0.37% at 55.2 degrees for a
`380 nm wavelength (violet light) (id.) and that violet light suffices as the
`claims do not require that the visible light be of any particular wavelength
`(id. at 35, 38).
`
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`IPR2020-00179
`Patent 6,844,990 B2
`Petitioner contends, thus, that “Tada’s 8.12% to 9.88% maximum
`divergence either is ‘on the order of 10% or is at least sufficiently close to it
`such that there is no meaningful difference from 10% in the impact of the
`maximum divergence.” Id. at 39–40 (citing Ex. 1008 ¶ 58). Petitioner
`further contends that, “[a]ccordingly, the disclosure in Tada renders [the at
`least ±10% divergence] limitation obvious because the maximum deviation
`is ‘close enough’ to the claimed maximum deviation ‘such that one skilled in
`the art would have expected [it] to have the same properties.’” Id. at 40
`(citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Titanium
`Metals Corp. of Am. v. Banner, 778 F.2d 775, 778 F.2d 783 (Fed. Cir. 1985).
`In arguing it would have been obvious to increase the maximum
`deviation, Petitioner contends that
`it would have been obvious for a [person of ordinary skill in the
`art] . . . to modify Tada’s third embodiment lens system through
`routine experimentation to add an additional divergence of only
`0.12% (for violet light) to this lens system’s 9.88% maximum
`divergence (or up to 1.88% added to 8.12% for red light) to
`further expand the useful parts of the image and improve the
`definition in the already expanded zone of Tada’s third
`embodiment.
`Pet. 41. Petitioner relies on In re Aller, 220 F.2d 454, 456 (CCPA 1955), for
`the principle that “where the general conditions of a claim are disclosed in
`the prior art, it is not inventive to discover the optimum or workable ranges
`by routine experimentation.” Pet. 42. In effect, Petitioner relies on Tada as
`disclosing a lens system, including its third embodiment, and argues that
`reaching a workable lens meeting the claim limitations requires nothing
`more than routine experimentation. Petitioner supports its contention by
`identifying that, in lens design, there are design tradeoffs, including image
`quality, which includes “the definition of the image captured in different
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`IPR2020-00179
`Patent 6,844,990 B2
`zones of the field of view,” and that “[d]epending on the application of the
`lens, it may be desirable that a particular zone have higher definition at the
`expense of lower definition in less important zones.” Id. (citing Ex. 1008
`¶ 60). Petitioner further contends that “Tada’s third embodiment shows a
`lens system with an intermediate zone of enhanced definition compared to
`the center and edges of the system” and highlights that further enhancement
`of the intermediate zone by adding a further “0.12-1.88% deviation . . .
`would have been well within the skill of a [person of ordinary skill in the
`art]” and that adding such further deviation “would have been undertaken as
`part of routine engineering optimization techniques with a reasonable
`expectation that it would have lead [sic] to further improved definition in the
`intermediate zone while maintaining acceptable image quality.” Id. at 42–43
`(citing Ex. 1008 ¶¶ 60–61).
`As to claim 5 itself, Petitioner contends that Tada’s third embodiment
`lens system of Figure 11 together with Table 5 meets the further limitation
`that “the objective lens compresses the center of the image and the edges of
`the image and expands an intermediate zone of the image located between
`the center and the edges of the image.” Id. at 47–52 (citing Ex. 1008 ¶¶ 63–
`64, 68–72). Petitioner relies, as discussed above, on the plots of the
`distribution function of Tada’s third embodiment. Petitioner highlights that
`Tada’s third embodiment lens system has a similarly shaped distribution
`function to that of Figure 9 of the ’990 patent. Id. at 48–49 (citing Ex. 1001,
`Fig. 9; Ex. 1008 ¶ 69).
`b) Patent Owner’s Contentions and Our Conclusions
`Patent Owner raises a number of arguments as to why Petitioner has
`not shown Tada renders claim 5 unpatentable. Prelim. Resp. 17–36. Patent
`Owner identifies some as applicable to all grounds. Id. at 17–29. Patent
`
`19
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`IPR2020-00179
`Patent 6,844,990 B2
`Owner identifies others as specific to the ground of obviousness over Tada
`alone. Id. at 30–36. We have considered the parties’ evidence and argument
`and determine that Petitioner has demonstrated a reasonable likelihood that
`it would prevail in establishing that claim 5 would have been obvious over
`Tada, notwithstanding Patent Owner’s arguments to the contrary. We focus
`our analysis on the issues that are disputed by Patent Owner.
`Patent Owner contends that “Petitioner failed to establish that the
`Code V analysis could have been done by a [person of ordinary skill in the
`art] . . . to recreate this same analysis at the time of the invention.” Id. at 19–
`20. Patent Owner argues that Dr. Chipman’s declaration testimony is
`insuf
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