UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`LG ELECTRONICS INC.
`Petitioner
`
`v.
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`IMMERVISION, INC.
`Patent Owner
`
`_________________
`
`Case IPR2020-00195
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`Patent No. 6,844,990
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`_________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE UNDER 37 C.F.R.
`§ 42.107
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`Case No. IPR2020-00195
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`Docket No.: 688266-72IPR
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`TABLE OF CONTENTS
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`page
`INTRODUCTION ........................................................................................... 1 
`I. 
`THE INVENTION OF CLAIM 21 OF THE ‘990 PATENT .......................... 4 
`II. 
`III.  THE ASSERTED PRIOR ART ...................................................................... 8 
`A.  Tada .................................................................................................................. 8 
`B.  Nagaoka .......................................................................................................... 11 
`C.  Baker ............................................................................................................... 14 
`IV.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 16 
`V. 
`CLAIM CONSTRUCTION .......................................................................... 16 
`VI.  PETITIONER FAILED TO DEMONSTRATE THAT THERE IS
`A REASONABLE LIKELIHOOD IT WILL PREVAIL WITH
`RESPECT TO THE CHALLENGED CLAIM OF THE ‘990 PATENT ..... 17 
`A.  Legal Standards .............................................................................................. 17 
`B.  Petitioner Failed to Establish that the Code V Analysis Essential
`to All Grounds Was Possible at the Time of the Invention ........................... 19 
`C.  Petitioner’s Use of Tada in All Grounds is Based on Impermissible
`Hindsight ........................................................................................................ 22 
`D.  None of Petitioner’s Grounds Addressed Whether Tada, As
`Modified, Would Satisfy its Express Operational Conditions ...................... 28 
`E.  Petitioner Failed to Meet its Burden to Show Claim 21 Would Have
`Been Obvious Over Tada Alone (Ground 1) ................................................. 30 
`1.  Petitioner’s Theory of Obviousness for Ranges Simply Being
`“Close Enough” is Legally Incorrect .......................................................... 30 
`2.  Petitioner’s Alleged Reason to Modify Tada is Conclusory and
`Based on Hindsight Rather than Actual Evidence ...................................... 32 
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`F.  Petitioner Failed to Meet Its Burden on Grounds 2 and 3 By
`Glossing Over the Clear Teaching Away from the Claimed
`Invention by Nagaoka and Baker .................................................................. 36 
`1.  Petitioner Ignored Nagaoka’s Overall Teaching Away from
`Image Point Distribution Functions Having Unsatisfactory Image
`Heights at the Periphery .............................................................................. 37 
`2.  Petitioner Grossly Mischaracterized Baker’s Teachings to Detract
`from Baker’s Clear Focus on Peripheral Content Enhancement ................ 40 
`VII.  CONCLUSION .............................................................................................. 44 
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Federal Cases
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 35
`Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 22
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .................................................................... 39, 41
`Galderma Labs., L.P. v. Tolmar, Inc.,
`737 F.3d 731 (Fed. Cir. 2013) ...................................................................... 38, 41
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 28
`In re Hedges,
`783 F.2d 1038 (Fed. Cir. 1986) .......................................................................... 27
`Intelligent Bio-Sys., Inc. v Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 18
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 18
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 18
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017) .......................................................................... 22
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) .......................................................................... 37
`PersonalWeb Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 24
`
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`In re Peterson,
`315, F.3d 1325 (Fed. Cir. 2003) ................................................................... 30, 31
`Polaris Indus. v. Arctic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) .......................................................................... 18
`In re Royka,
`490 F.2d 981 (CCPA 1974) ................................................................................ 17
`Titanium Metals Corp. of Am. v. Banner,
`778 F.2d 775 (Fed. Cir. 1985) ...................................................................... 30, 31
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .......................................................................... 24
`In re Wesslau,
`353 F.2d 238 (CCPA 1965) ................................................................................ 27
`Yeda Research & Dev. Co. v. Mylan Pharm., Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) .......................................................................... 24
`Patent Trial and Appeal Board Cases
`Air Liquide Large Indus. U.S. LP v. Praxair Tech., Inc.,
`IPR2016-01079, Paper 14 (Nov. 21, 2016) ........................................................ 21
`Gen. Plastic Indus. Co., Ltd. v. Canon Inc.,
`IPR2015-01954, Paper 9 (Mar. 9, 2016) ............................................................ 28
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2018-00827, Paper 9 (Oct. 16, 2018)(informative) ...................................... 36
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (Sep. 23, 2014) ........................................................... 36
`Panduit Corp. v. Corning Optical Commc’ns LLC,
`IPR2017-00528, Paper 7 (May 30, 2017) ........................................................... 17
`Federal Statutes
`35 U.S.C. § 103 ........................................................................................................ 20
`35 U.S.C. § 314 ........................................................................................................ 17
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`Other Authorities
`37 C.F.R. § 42.65 ..................................................................................................... 21
`84 Fed. Reg. 64280 (Nov. 21, 2019) ....................................................................... 17
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`EXHIBIT LIST
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`Exhibit
`Description
`No.
`2001 U.S. Patent Application Publication No. 2001/0050758
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`vi
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`I.
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`INTRODUCTION
`Petitioner’s request for inter partes review of U.S. Patent No. 6,844,990
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`(“the ‘990 Patent”) is an exemplary exercise in improper hindsight analysis.
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`Conclusory statements that conflict with or omit clear teachings from the
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`references pervade the Petition and are supported only by citation to an expert
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`declaration that merely parrots the Petition language without offering further
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`underlying facts or data. In particular, Petitioner’s flawed usage and interpretation
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`of Tada infects all three of Petitioner’s proposed obviousness grounds.
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`For context, the sole challenged claim 21 of the ‘990 Patent includes, inter
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`alia, a specific configuration of an image point distribution function for a
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`panoramic objective lens. The lens distribution function relates the location of a
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`point in an image with a field angle of its corresponding object point. In claim 21,
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`the image point distribution function causes image compression in the center and at
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`the edges but expands an intermediate zone between the center and the edges of the
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`image.
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`Tada, Petitioner’s chosen primary reference for all three grounds in the
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`Petition, is directed to a “super wide angle” lens but contains absolutely no
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`description of its image point distribution function or how various zones in an
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`image may be compressed or expanded. Such information must be derived
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`through experimentation and modeling, and this is where Petitioner’s grounds
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`begin to collapse. Petitioner argued that the image point distribution function for
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`one cherry-picked embodiment in Tada can be found not in Tada itself, but instead
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`by using a program called “Code V.” Petitioner alleged that Code V was capable
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`of the requisite analysis by 2001 (the priority date of the ‘990 Patent), but only
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`cited to an unsupported and unexplained verbatim statement from its expert, Dr.
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`Chipman. Such “evidence” is insufficient to satisfy Petitioner’s burden of showing
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`that a person of ordinary skill in the art (“POSA”) would have been able to glean
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`the necessary information from Tada.
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`Petitioner’s entire analysis in all grounds also involves a rationale that could
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`only have been derived from the ‘990 Patent itself by impermissible hindsight
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`reconstruction of the claimed invention. Petitioner: (1) did not explain why a
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`POSA would have even started with Tada when the reference has no facial
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`relevance to image point distribution functions; (2) provided no evidence that a
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`POSA would have had a reason to perform a Code V analysis in or before 2001 on
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`Tada that its expert did in 2019; and (3) failed to justify why it isolated such
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`analysis to only one of Tada’s four embodiments. Before even considering
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`whether Petitioner’s expert correctly utilized Code V, these gaps in the Petition
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`show that Petitioner went hunting for the lens configuration recited in claim 21 of
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`the ‘990 patent and found, by sheer happenstance, a potential candidate in Tada
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`that a POSA in 2001 would have had no reason to consult or analyze in the same
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`manner. This is the definition of improper hindsight reconstruction.
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`Upon modifying Tada in all its grounds, Petitioner further concluded,
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`without adequate support, that the required lens modifications to construct the
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`claimed invention of claim 21 of the ‘990 patent involved mere “routine
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`optimization” and would maintain acceptable image quality. Petitioner ignored
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`that Tada set several express lens conditions that determine whether a resulting
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`image is acceptable. Petitioner failed to demonstrate the as-modified lens systems
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`could still satisfy the express lens conditions required by Tada and, therefore, left
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`open the possibility that the proposed changes would render Tada unsatisfactory
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`for its intended purpose. Such conclusory and incomplete analysis is insufficient
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`to meet Petitioner’s burden on obviousness.
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`Each ground also fails for individual reasons. For example, Petitioner
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`presents essentially two arguments to modify Tada in ground 1. The first, that the
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`claimed “at least ±10%” range is “close enough” to Tada’s supposed range as to be
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`prima facie obvious, is not supported by the facts of Petitioner’s cited cases and is
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`contradicted by a very similar, recent Federal Circuit decision. The second, that a
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`POSA would have sought to increase the resolution in the intermediate zone, is
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`entirely conclusory. Petitioner presumed, without support, that the intermediate
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`zone in Tada’s third example embodiment was most important, even though
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`Tada’s own text suggests otherwise. Moreover, Petitioner stated that a lens’s
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`application can influence which zone may be important, but in determining that
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`Tada’s intermediate zone was important, never considered whether such a
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`proclamation was consistent with Tada’s own expressly listed application.
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`Grounds 2 and 3 also fail because Petitioner did not follow the Federal
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`Circuit’s mandate that prior art references be considered in their entireties.
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`Petitioner never examined portions of Nagaoka that explicitly teach away from the
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`proposed modification to Tada and from the claimed invention. Nagaoka criticizes
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`lenses that do not adequately capture image data at the edges, but claim 21 of the
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`‘990 Patent, and Petitioner’s proposed change to Tada, result in the very problem
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`of limited edge data. Baker similarly seeks to address disadvantages in image
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`capture at the periphery, but Petitioner mischaracterized a portion of the reference
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`in the Petition to suggest that Baker teaches a broader concept. This inaccurate
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`narrative does not properly consider Baker’s teachings that expanding the image at
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`the edges is important.
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`For at least these reasons, recited in further detail below, the Petition should
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`be dismissed.
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`II. THE INVENTION OF CLAIM 21 OF THE ‘990 PATENT
`The ‘990 Patent is directed to improvements in panoramic image capture and
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`display. Ex. 1001 at 1:13-15. To avoid unpleasant distortions when displaying a
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`portion of the panoramic image to an observer, a camera’s objective lens typically
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`required an image point distribution function that was as linear as possible. Id. at
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`2:4-8. That is, an image point’s (e.g., b' in Fig. 5) relative distance (dr) from the
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`image center should equal a field angle (e.g., α2 in Fig. 5) of the corresponding
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`object point (e.g., b in Fig. 5) multiplied by a constant (e.g., dr=K⸱α). Id. at 2:30-
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`42. Figs. 4A and 4B of the ‘990 patent, reproduced below, neatly illustrate the
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`concept:
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`The concentric circles in Fig. 4A represent image points that correspond to object
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`points sharing a common field angle (in increments of 10°). Id. at 2:14-29. The
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`plot in Fig. 4B shows the linearity of the function (Fdc), demonstrating that a ratio
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`between field angles (α) of two object points in the panorama should be the same
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`as a ratio of relative distances (dr) of the corresponding image points from the
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`image center.1 Id. at 2:9-13.
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`The inventors of the ‘990 patent recognized that this arrangement presents
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`disadvantages when enlarging image portions for display. Id. at 3:1-9. The ‘990
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`Patent’s solution includes providing an objective lens that has a non-linear image
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`point distribution function with a maximum divergence of at least ±10% compared
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`to the linear function, such that the image has at least one substantially expanded
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`zone and at least one substantially compressed zone. Id. at 4:11-21. The
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`“maximum divergence” refers to the point on the image point distribution function
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`plot that is farthest away from a corresponding point on the linear distribution
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`function. Id. at 8:44-67. This can be seen, for example, in Fig. 8, where the
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`greatest relative distance between the image point distribution function Fd2 and the
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`linear distribution function Fdc is found at points Pd and Pdl. Id. at 9:36-52.
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`An image zone is “expanded” when it covers a greater number of pixels on
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`an image sensor than it would with a linear distribution lens, meaning conversely
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`that a “compressed” zone occupies fewer image sensor pixels. Id. at 3:66-4:10.
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`This can be graphically represented in the image point distribution plot – a slope of
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`1 For example, an object point at twice the field angle of another object point
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`would have a corresponding image point located twice as far from center.
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`the distribution function that is greater than the slope of the linear distribution
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`function indicates an expanded zone, while a lesser slope indicates a compressed
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`zone. Id. at 9:13-35.
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`The only claim at issue in this proceeding, claim 21, is directed to a very
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`specific embodiment of the objective lens. Claim 21 recites2 that “the lens
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`compresses the center of the image and the edges of the image, and expands an
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`intermediate zone of the image located between the center and the edges of the
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`image.” Id. at cl. 21. An example is
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`illustrated by the image point
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`distribution plot in Fig. 9
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`(reproduced at right). A compressed
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`zone is located between α=0° and
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`α=30° and another is located between α=70° and α=90°, based on the shallow
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`slopes in these regions when compared to the linear distribution function (Fdc,
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`shown in dashed lines). Id. at 9:53-10:5. Conversely, between α=30° and α=70°, a
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`steep slope compared to the linear distribution function Fdc indicates the presence
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`2 Claim 21 depends on claim 17, which calls for the non-linear image point
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`distribution function with a maximum divergence of ±10%, as discussed above.
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`of an expanded zone. Id. The result is a high definition intermediate zone, which
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`lends itself well to digital enlargements because it occupies more pixels. Id.
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`III. THE ASSERTED PRIOR ART
`A. Tada
`Tada “relates to a super wide angle lens system which can be used for a
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`monitoring system (CCTV) etc.” Ex. 1007 at 1:7-9. Tada explains that in super
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`wide angle lens systems, a first lens element is typically a negative meniscus lens
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`because it “can advantageously reduce, due to the shape thereof, the astigmatism
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`and distortion of a bundle of light chiefly at a large angle of view.” Id. at 1:11-27
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`(emphasis added). Tada complains that when the super wide angle lens system has
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`a negative second lens element, the first meniscus lens element becomes difficult
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`to produce because the radius of curvature on the image side surface must be
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`reduced. Id. at 1:28-35. However, compensating by instead making the second
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`lens element biconcave to increase negative power can cause under curvature of
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`field.3 Id. at 1:35-41.
`
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`3 “Curvature of field” is a known aberration where portions of an image come into
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`focus in front of or behind the desired image plane. See e.g., Ex. 2001 at
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`¶¶ [0269]-[0272], [0292]-[0294]. The result is blurry or “out-of-focus” regions on
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`a planar sensor or display. Id. at [0269]. “Under curvature” occurs when the
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`Tada’s object is therefore to provide a super wide angle lens system without
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`increasing the radius of curvature on the image side of the negative meniscus first
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`lens element. Id. at 1:48-53. Tada’s solution is to manufacture the second lens
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`element to have a biconcave shape in the vicinity of the optical axis (for ray
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`bundles at a small angle of view), and to have a negative meniscus lens shape at a
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`peripheral portion thereof “for a bundle of rays at a large angle of view.” Id. at
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`1:54-67, 4:9-30. With this configuration, Tada seeks to suppress distortion, under
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`curvature of field, and other negative effects on light incoming from large angles
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`with a lens system that is easier to manufacture than conventional lenses.
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`Tada further sets four conditions that the object side surface of the second
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`lens element must meet. Id. at 2:7-28, 4:48-50. Failure to satisfy these conditions
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`creates undesirable characteristics in the lens and problems in the resulting image.4
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`Id. at 4:48-5:7. For example, condition (2) requires a ratio of A4 (the fourth-order
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`aspherical factor of the aspherical surface of the second lens) to f3 (a cube of the
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`projected image surface is curved with its concavity toward the projecting system,
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`blurring the image at the periphery. Id. at ¶¶ [0290]-[0294]; Figs. 19(a)-19(b) (see
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`element 52).
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`4 Tada also sets four conditions for the second lens group that must be satisfied to
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`prevent image deficiencies. Id. at 2:33-67; 5:8-38.
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`whole lens system focal length) to be between 2.0×10-2 and 1.0×10-1. Id. at 2:7-28.
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`“If the ratio in condition (2) is smaller than the lower limit, the astigmatism can not
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`be sufficiently compensated.” Id. at 4:61-63.
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`Tada discloses four example lens system embodiments where the second
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`lens element satisfies the aforementioned conditions. Id. at 10:53-11:12. The first
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`of the four example embodiments includes a front lens group 10 made of two lens
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`elements 11, 12 and a rear lens group 20 made from five lens elements 21, 22, 23,
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`24, 25, along with a diaphragm S and a glass cover C leading to an image pickup
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`surface 15 of a CCD. Id. at Fig. 1; 6:1-25. The other three example embodiments
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`have the same basic lens system structure as the first embodiment, with differences
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`in, e.g., lens thicknesses, separation distances, and shapes. Id. at Figs. 6, 11, 15;
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`7:38-8:25, 8:60-9:28, 9:60-10:28.
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`For purposes of this proceeding, Tada is further notable for what it does not
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`disclose. Tada contains no data or discussion regarding an image point distribution
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`function (or the relationship of image height and field angle) for any of its lens
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`systems. Tada also contains no express preferences regarding resolution or
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`enhancement of particular image areas. Tada’s explicit teachings have almost
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`nothing in common with the ‘990 Patent’s invention, other than both involve wide-
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`angle lenses.
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`B. Nagaoka
`Nagaoka, similar to Tada, is directed to a monitoring system using a camera.
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`Ex. 1004 at 1:11-21. For Nagaoka’s monitoring system, the preferred lens is a
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`fisheye lens that can capture a field of view at a field angle of at least 90° from the
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`optical axis. Id. Nagaoka discusses a prior art fisheye lens that provides
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`“equidistant projection,” meaning the lens has a linear distribution function, with a
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`relationship of h=f⸱θ (where h is the height at a certain point, f is the focal distance
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`of the lens, and θ is the field angle). Id. at 1:33-50.
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`Nagaoka recognized the drawbacks of such a lens and its object was to
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`design an image pick-up device that solved these issues:
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`Since an image picked up by a fisheye lens having the above
`characteristics has a small volume of image data on its
`peripheral portion (field angle of around 90° with respect to the
`optical axis of the fisheye lens), when the image is converted
`into a plane image, there are many missing portions of image
`data on the peripheral portion of the image and the missing
`portions must be interpolated. In addition, the image picked
`up by the fisheye lens having the above characteristics involves
`such a problem that the peripheral portion of the image is
`distorted.
`An object of the present invention is to provide an image pick-
`up device comprising a fisheye lens, an image display device
`and an information recording medium, which minimize missing
`portions of image data by extracting a large volume of image
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`data at a field angle of around 90° with respect to the optical
`axis of the fisheye lens to reduce interpolating of the missing
`portions and can obtain a natural plane image when images of
`all the directions of the field of view around the optical axis are
`picked up at a field angle of at least 90° with respect to the
`optical axis and are converted into plane images.
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`Id. at 1:50-2:4 (emphasis added). Nagaoka’s solution uses a fisheye lens having a
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`relationship of h=nf⸱tan(θ/m), with 1.6 ≤ m ≤3 and m-0.4 ≤ n ≤ m+0.4. Id. at 2:12-
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`21.
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`Nagaoka compares one example embodiment (h=2f⸱tan(θ/2) to the linear
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`function and two other possible functions (h=2f⸱sin(θ/2) and h=f⸱sin(θ)) in Figs.
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`4A to 4D, reproduced below. Id. at 6:14-29. These figures represent image
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`heights using concentric circles at 10° intervals in field angle, much like Fig. 4A of
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`the ‘990 Patent shown above. Id.
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`Nagaoka criticizes the image height he of an image Me at a peripheral
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`portion of the lenses in Figs. 4C and 4D as being too small, and even the
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`conventional linear lens (Fig. 4B) provides a peripheral image height that “is not
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`satisfactory.” Id. at 6:30-45. In contrast, the lens in Fig. 4A provides a peripheral
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`image height he that “is enlarged and larger than the image height ho of the image
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`Mo near the optical axis,” resulting in the capture of “a larger volume of image
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`data” and a lack of distortion. Id. at 6:46-52. Thus, “since an image at the
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`peripheral portion is enlarged and a large volume of data on the peripheral portion
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`can be extracted, the volume of image data to be interpolated can be greatly
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`reduced, when compared with the conventional system.” Id. at 6:60-65. This
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`contrasts with the arrangement in claim 21 of the ‘990 Patent described above,
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`wherein the edges (and center) are compressed, and enhancement occurs in an
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`intermediate zone between the center and the edges.
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`C. Baker
`Baker relates to a video conferencing system with automatic, voice-
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`directional image steering through electronic selection from a panoramic video
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`scene. Ex. 1005 at 1:10-14. Baker references other types of non-multimedia
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`applications (e.g., security, surveillance, unmanned exploration, etc.) as similarly
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`employing hemispheric data, but which have “certain limitations in capturing and
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`manipulating valuable information and hemispheric scenes in a rapid (i.e., real-
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`time) and cost-effective manner.” Id. at 2:11-20.
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`Baker clarifies that in typical large field-of-view lenses, “the valuable
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`content from the peripheral areas lacks in potential image quality (resolution)
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`mapping because the imaging device and system does not differentiate between
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`these areas and the central areas of less valuable detail.” Id. at 3:60-64.
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`More typically, the peripheral content imaged by a conventional
`lens is so degraded in comparison with the central area that the
`lens allows for only a minimal area of the periphery to be
`recorded by the film or electronic imager. As a result of these
`“off-axis” aberrations inherent to large field, the relevant
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`information of the horizon in the scene can be underutilized or
`worse yet, lost.
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`Id. at 4:8-14.
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`As a result, Baker’s inventive lens advantageously “emphasiz[es] the
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`peripheral portion of the hemispheric field of view and thus provide[s] greater
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`resolution with existing imaging devices for the relevant visual information in the
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`scene.” Id. at 6:43-56. Compared to conventional wide angle lenses, which
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`dedicate a large portion of the imaging surface to the central field, “the lens
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`constructed according to the present invention has a fairly significant portion of the
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`imaging surface dedicated to the peripheral field.” Id. at 23-32. In one example,
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`the lens can be designed to enhance the field of view within 10 degrees of the
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`horizon. Id. at 12:33-42. In another example, the lens can enhance the field of
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`view in the region extending from the horizon up to 45 degrees. Id. at 12:42-48.
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`How far from the horizon the enhanced portion extends depends on the needs of
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`the application, “preferably falling somewhere between these two extremes.” Id. at
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`12:48-55. Accordingly, much like Nagaoka, Baker’s teachings concentrate on
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`improving the poor image quality at the periphery of a lens by enhancing the
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`periphery or edges of the image. This contrasts with the arrangement in claim 21
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`of the ‘990 Patent described above, wherein the edges (and center) are compressed,
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`and enhancement occurs in an intermediate zone between the center and the edges.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner has proposed that a POSA of the ‘990 Patent “would have had at
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`least a bachelor’s degree in Physics, Optical Engineering, and/or Electrical
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`Engineering and at least five years’ experience in developing and designing optical
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`products or systems and have familiarity with image processing algorithms and
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`optical design software.” Petition at 20. At this stage of the proceeding, and solely
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`for purposes of this Preliminary Response, Patent Owner does not object to
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`Petitioner’s proposed skill level. Patent Owner reserves the right to assert an
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`alternative definition for a POSA in this or another proceeding involving the ‘990
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`Patent, where appropriate.
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`V. CLAIM CONSTRUCTION
`Petitioner has proposed to construe a number of claim terms related to claim
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`21 of the ‘990 Patent. Petition at 21-29. While not necessarily agreeing with the
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`proposed constructions of those terms, at this stage of the proceeding, and solely
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`for purposes of this Preliminary Response, Patent Owner does not object to the
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`definitions set out by Petitioner. Patent Owner reserves the right to assert
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`alternative constructions for relevant claim terms in this or another proceeding
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`involving the ‘990 Patent, where appropriate.
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`VI. PETITIONER FAILED TO DEMONSTRATE THAT THERE IS A
`REASONABLE LIKELIHOOD IT WILL PREVAIL WITH RESPECT
`TO THE CHALLENGED CLAIM OF THE ‘990 PATENT
`A. Legal Standards
`An inter partes review cannot be instituted unless “the information
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`presented in the petition … shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a). It is the Petitioner’s burden to show this statutory
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`threshold is met. See November 2019 Patent Trial and Appeal Board Consolidated
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`Trial Practice Guide5 at 3 (“The Board … may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met”).
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`“In order to establish obviousness of a claimed invention, all the claim
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`limitations must be shown to have been taught or suggested by the prior art.”
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`Panduit Corp. v. Corning Optical Commc’ns LLC, IPR2017-00528, Paper 7 at 12
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`(May 30, 2017) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). “[A] patent
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`claim composed of several elements, however, is not proved obvious merely by
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`demonstrating that each of its elements was known, independently, in the prior
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`art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). “[I]t can be
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`important to identify a reason that would have prompted a person of ordinary skill
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`in the relevant field to combine [prior art] elements in the way the claimed new
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`5 See notice at 84 Fed. Reg. 64280 (Nov. 21, 2019).
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`invention does.” Id. at 418-419. Thus, it is “[Petitioner]’s burden to demonstrate
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`both that a skilled artisan would have been motivated to combine the teachings of
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`the prior art references to achieve the claimed invention, and that the skilled artisan
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`would have had a reasonable expectation of success in doing so.” Intelligent Bio-
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`Sys., Inc. v Illumina Cambridge Ltd., 821 F.3d 1359, 1363-64 (Fed. Cir. 2016)
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`(internal quotations omitted). The obviousness analysis must avoid a focus “on
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`what a skilled artisan would have been able to do, rather than what a skilled artisan
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`would have been motivated to do