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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`
`v.
`
`IMMERVISION, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00195
`
`U.S. Patent No. 6,844,990
`____________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,844,990
`CHALLENGING CLAIM 21
`
`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`TABLE OF CONTENTS
`
`I.
`Introduction ........................................................................................................ 1
`II. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1) ............................................. 2
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................. 2
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ...................................... 2
`C.
`Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3)...................... 3
`D.
`Service Information under 37 C.F.R. § 42.8(b)(4) ................................ 4
`III. Payment of Fees under 37 C.F.R. § 42.15(a) ..................................................... 4
`IV. The ’990 Patent And Its Prosecution ................................................................. 4
`A.
`Brief Description of the Patent .............................................................. 4
`B.
`Summary of the Prosecution History ..................................................15
`C.
`Summary of the Reexamination of the Patent ....................................17
`V. Requirements for Inter Partes Review under 37 C.F.R. § 42.104 ...................19
`A.
`Grounds for standing under 37 C.F.R. § 42.104(a) .............................19
`B.
`Claims for Which Review Is Requested .............................................19
`C.
`Statutory Grounds of Challenge ..........................................................19
`D.
`Level of skill of a person having ordinary skill in the art ...................20
`E.
`Proposed Claim Constructions ............................................................20
`1.
`“panoramic objective lens” .......................................................21
`2.
`“optical means for projecting…” ..............................................21
`3.
`“object points of the panorama” ...............................................25
`4.
`“image point” ............................................................................26
`5.
`“field angle of object points” ....................................................26
`
`i
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`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`B.
`
`6.
`“maximum divergence” ............................................................27
`“expanded zone” .......................................................................27
`7.
`“compressed zone” ....................................................................28
`8.
`VI. Detailed Grounds for Unpatentability ..............................................................29
`A.
`The Board Should Not Exercise Its Discretion to Deny Institution....29
`1.
`The Grounds Are Not Cumulative ............................................29
`2.
`This Petition Is Not an Unfair Follow-On Petition ...................30
`3.
`Two New Petitions Each Covering a Different Claim of the
`Same Patent Is Appropriate Here ........................................................30
`4.
`Substantially the Same Prior Art and Arguments Were Not
`Previously Presented to the Office ......................................................32
`Ground 1: Tada renders Claim 21 obvious .........................................33
`1.
`Limitations of Claim 17 from Which Claim 21 Depends.........33
`2.
`Claim 21: “The panoramic objective lens according to claim 17,
`wherein the 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.” ................................52
`Ground 2: Tada in view of Nagaoka renders Claim 21 obvious .........57
`1.
`“the distribution function having a maximum divergence of at
`least ±10% compared to a linear distribution function” .....................58
`2.
`It Would Have Been Obvious to Combine Tada with the
`Teachings of Nagaoka .........................................................................63
`Ground 3: Tada in view of Baker renders Claim 21 obvious .............68
`1.
`“the distribution function having a maximum divergence of at
`least ±10% compared to a linear distribution function” .....................69
`2.
`It Would Have Been Obvious to Combine Tada with the
`Teachings of Baker ..............................................................................72
`
`C.
`
`D.
`
`ii
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`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`VII. Conclusion .......................................................................................................77
`
`
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`iii
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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`EXHIBIT LIST
`
`1002
`1003
`
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`Exhibit Number Description
`1001
`U.S. Patent No. 6,844,990 to Artonne et al. (with Ex Parte
`Reexamination Certificate (10588th))
`Prosecution History of U.S. Patent No. 6,844,990
`Prosecution History of Reexamination No. 90/013,410
`(without materials designated as nonpatent literature)
`U.S. Patent No. 6,128,145 to Nagaoka
`U.S. Patent No. 5,686,957 to Baker
`U.S. Patent No. 3,953,111 to Fisher, et al.
`U.S. Patent No. 5,861,999 to Tada
`Declaration of Russell Chipman, Ph.D.
`CV of Russell Chipman, Ph.D.
`Patent Owner’s Initial Infringement Contentions in Case No.
`1:18-cv-01631-MN-CJB (D. Del.) (Claim 5) [REDACTED]
`Patent Owner’s Initial Infringement Contentions in Case No.
`1:18-cv-01630-MN-CJB (D. Del.) (Claim 21)
`Excerpt from The American Heritage Dictionary of Science
`(1986)
`Data from Code V analysis of Tada’s third embodiment
`performed by Dr. Russell Chipman
`
`1012
`
`1013
`
`iv
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`

`

`
`I.
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq., Petitioner
`
`LG Electronics Inc. (“Petitioner”) hereby requests Inter Partes Review (“IPR”) of
`
`claim 21 of U.S. Patent No. 6,844,990 (“the ’990 Patent,” Ex. 1001).
`
`The ’990 Patent was previously subject to an ex parte reexamination, which
`
`resulted in, among other things, cancellation of independent claim 17. Dependent
`
`claim 21 of the ’990 Patent, which is the only claim challenged in this IPR, was not
`
`the subject of the prior reexamination proceeding. Claim 21 depends from
`
`independent claim 17 and adds nothing more than a known variation to the
`
`panoramic objective lens used in the apparatus of cancelled claim 17 to capture a
`
`digital panoramic image.
`
`In particular, dependent claim 21 requires an objective lens that compresses
`
`the center and edges of an image and expands an intermediate zone located
`
`between the center and the edges of the image. But this very lens was disclosed in
`
`a reference not previously considered by the Office (U.S. Patent No. 5,861,999 to
`
`“Tada”, Ex. 1007), which forms the basis for Ground 1 (as well as partly forming
`
`the basis for Grounds 2 and 3). The remainder of Grounds 2 and 3 separately add
`
`two secondary references to address a numerical value mentioned in independent
`
`claim 17. In reexamination, however, the patent owner already effectively
`
`conceded that these secondary references anticipated independent claim 17. As
`
`1
`
`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`
`explained in detail below, it would have been obvious for a person of ordinary skill
`
`in the relevant art at the time to modify the lens disclosed in the primary reference
`
`(Tada) to include the numerical value mentioned in cancelled independent claim
`
`17. Therefore, Petitioner respectfully requests institution of inter partes review of
`
`claim 21 of the ’990 Patent.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Petitioner LG Electronics Inc. as well as LG Electronics U.S.A., Inc. and LG
`
`Innotek Co. Ltd. are real parties-in-interest.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`As of the filing date of this Petition, the ’990 Patent is involved in two
`
`pending litigations in the District of Delaware, captioned ImmerVision, Inc. v. LG
`
`Electronics U.S.A., Inc. et al., Case No. 1-18-cv-01630 (“the 1630 Litigation”) and
`
`ImmerVision, Inc. v. LG Electronics U.S.A., Inc. et al., Case No. 1-18-cv-01631
`
`(“the 1631 Litigation”).
`
`In addition, Petitioner is concurrently filing a petition for IPR of claim 5 of
`
`the ’990 Patent.
`
`The ’990 Patent was the subject of the following proceedings, which are
`
`closed:
`
`2
`
`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`• 6115187 Canada, Inc. d/b/a ImmerVision, Inc. v. Samsung Techwin
`
`America et al., Case No. 1-16-cv-00002 (Jan. 4, 2016 D. Del.);
`
`• Ex Parte Reexamination of U.S. Patent No. 6,844,990, Control No.
`
`90/013,410, filed Nov. 26, 2014;
`
`• Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC.,
`
`Case No. IPR2014-01438 (Sep. 03, 2014 P.T.A.B.);
`
`• 6115187 Canada Inc. v. CBC Co. Ltd. et al., Case No. 1-13-cv-01139
`
`(Jun. 25, 2013 D. Del.); and
`
`• ImmerVision, Inc. v. Vivotek, Inc. et al., Case No. 2-13-cv-01117 (Jun.
`
`25, 2013 D. Nev.).
`
`Petitioner is not aware of any other judicial or administrative matter
`
`involving the ’990 Patent that would affect, or be affected by, a decision in the
`
`requested IPR.
`
`C. Lead and Backup Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioner designates Dion M. Bregman (Reg. No. 45,645) as lead counsel
`
`for this matter, and designates Bradford A. Cangro (Reg. No. 58,478), Collin W.
`
`Park (Reg. No. 43,378), Andrew V. Devkar (Reg. No. 76,670), and Jeremy D.
`
`Peterson (Reg. No. 52,115) as back-up counsel for this matter.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`3
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`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`Service Information under 37 C.F.R. § 42.8(b)(4)
`D.
`Postal mailings and hand-deliveries should be addressed to: Morgan, Lewis
`
`& Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Pursuant to 37 C.F.R. 42.8(b)(4), Petitioner consents to e-mail service at:
`
`LGE-ImmerVision-IPRs@morganlewis.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15(A)
`The required fees are submitted herewith. The undersigned further
`
`authorizes payment for any additional fees due at any time during this proceeding
`
`to be charged to Deposit Account No. 50-0310 (Order No. 002664-8002).
`
`IV. THE ’990 PATENT AND ITS PROSECUTION
`A. Brief Description of the Patent
`The ’990 Patent is directed towards a method for capturing a digital
`
`panoramic image by way of a panoramic objective lens. Ex. 1001, Abstract.
`
`According to the ’990 Patent, Figure 5 schematically represents a classical system
`
`for taking panoramic shots, comprising a panoramic objective lens 15 (blue below)
`
`having an optical axis OZ (orange below) and a digital image sensor 17 (yellow
`
`below) arranged in the image plane of the objective lens 15. Ex. 1001, 6:66-7:2.
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`4
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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`The field angle of an object point (e.g., a, b, c, d – purple above) is the angle that
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`
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`an incident light ray passing through the object point considered and through the
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`center of the panorama PM, marked by a point “P”, has relative to the optical axis
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`OZ of the objective lens (e.g., α1, α2, -α2, -α1)1. Ex. 1001, 7:2-10. On the image
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`sensor 17, image points a', b', c', d' (green above) correspond to the object points a,
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`b, c, d (purple above) and are located at distances from the center of the image
`
`respectively equal to d1, d2, -d2, -d1. Ex. 1001, 7:11-14. According to the ’990
`
`
`1 In Figure 5, the angle of α1 is indicated as the angle between the points “a” and
`
`“b”. This is in error. Chipman Decl. (Ex. 1008) ¶ 27 n.1. The figure should have
`
`shown the angle as being between “a” and the axis OZ. Ex. 1001, 7:10-11 (“In this
`
`example, the angle α1 is equal to two times the angle α2.”). The same error exists
`
`for -α1. Id. The figure has been annotated in red to correct this error.
`
`5
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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`Patent, because the distribution of the image points according to the field angle of
`
`the object points is linear with a classical panoramic objective lens, the distances
`
`d1 and d2 are linked by the following relation: d1/α1=d2/α2. Ex. 1001, 17:14-19.
`
`As the angle α1 is here equal to 2α2, it follows that: d1=2d2. Ex. 1001, 7:20-22.
`
`The ’990 Patent states, that notion of “linearity” in the field of panoramic
`
`objective lenses is different from that prevailing in the field of paraxial optics. Ex.
`
`1001, 7:28-30. As used in the ’990 Patent, “linearity” refers to a ratio of
`
`proportionality between the distance of an image point measured relative to the
`
`center of the image and the field angle of the corresponding object point. Ex.
`
`1001, 7:24-28.
`
`According to the ’990 Patent, due to the property of linearity of a classical
`
`panoramic objective lens and the axial symmetry of panoramic objective lenses,
`
`image points corresponding to object points having an identical field angle form
`
`equally spaced concentric circles C10, C20 through C90 on an image disk 10, as
`
`shown in Figure 4A. Ex. 1001, 1:30-32, 2:14-18, 18:17-23.
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`6
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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`Ex. 1001, Fig. 4A. The circle C10 is formed by the image points corresponding to
`
`
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`object points having a field angle of 10 degrees from the center; the circle C20 is
`
`formed by image points corresponding to object points having a field angle of 20
`
`degrees; etc. Ex. 1001, 2:24-29. Again, because of the axial symmetry, the field
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`angle of an object point is between 0 and 90 degrees for an objective lens having
`
`an aperture of 180 degrees, e.g., as shown by the yellow semicircle in Fig. 6 below.
`
`Ex. 1001, 1:30-32, 2:22-23, 18:17-23.
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`7
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`
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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`
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`The purported invention of the ’990 Patent is a panoramic objective lens
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`having an image point distribution function that is not linear relative to the field
`
`angle of object points, thereby creating at least one zone of the image that is
`
`expanded while at least another zone of the image is compressed. Ex. 1001,
`
`Abstract. The ’990 Patent states that the technical effect of such a lens is that the
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`expanded zones of the image cover more pixels of the image sensor than if they
`
`were not expanded, and thus benefit from better definition. Ex. 1001, 4:3-6.
`
`The ’990 Patent states that the parts to be expanded and compressed,
`
`respectively, can be chosen according to the intended application. Ex. 1001, 7:66-
`
`8:5. Figure 7A illustrates the distribution functions of a panoramic objective lens
`
`that expands the image in the center. Ex. 1001, 8:12-14.
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`8
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`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`Ex. 1001, Fig. 7A. As with Figure 4A, the circle C10 is formed by the image
`
`
`
`points corresponding to object points having a field angle of 10 degrees; the circle
`
`C20 is formed by the image points corresponding to the object points having a
`
`field angle of 20 degrees; etc. Ex. 1001, 8:18-21. As seen by comparing Fig. 7A
`
`with 4A, the circles C10 and C20 are further from the center of the image and
`
`further from each other than the circles C10 and C20 obtained with a classical
`
`panoramic objective lens, while the circles C30 to C90 are closer to each other.
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`Ex. 1001, 8:21-26. This panoramic image thus has an expanded zone in the center
`
`and a compressed zone towards the edge of the image disk. Ex. 1001, 8:26-28.
`
`The ’990 Patent states that, through image processing software, the
`
`expansion zone in the center (circles C10 and C20), shown as Img1 at the bottom
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`9
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`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`of Figure 11 below, are transformed into a corrected image Img2 (top of Figure 11)
`
`comprising a linear image disk ID2. Ex. 1001, 10:61-67.
`
`Ex. 1001, Fig. 11 (annotated).
`
`
`Another way the ’990 Patent illustrates the expanded and compressed zones
`
`
`
`of a panoramic lens is by using the curve of a corresponding distribution function.
`
`Ex. 1001, 8:29-30. According to the ’990 Patent, the classical linear distribution
`
`function is expressed by Fdc=Kα in the form of a straight line of gradient K, which
`
`is equal to 1/90 for an objective lens having an angular aperture of 180 degrees.
`
`Ex. 1001, 8:30-34. The field angle α of the object points is represented on the X-
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`10
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`

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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`axis and is between 0 and 90 degrees. Ex. 1001, 8:34-36. The relative distance dr
`
`of an image point in relation to the center of the image disk is represented on the
`
`Y-axis and is between 0 (at the center of the image) and 1 (at the periphery of the
`
`image). Ex. 1001, 8:36-38.
`
`Compression
`
`Expansion
`
`
`Ex. 1001, Fig. 7A (annotated), Fig. 7B (annotated). As shown in Figure 7B, the
`
`
`
`
`
`curve of the function Fd1 has a higher gradient than the straight or linear line Fdc
`
`for angles α of between 0 and 20 degrees, then a lesser gradient after 20 degrees
`
`and up to 90 degrees. Ex. 1001, 8:38-41. A higher gradient means an expansion
`
`of the image and a lower gradient means a compression of the image. Ex. 1001,
`
`8:41-43; Chipman Decl. (Ex. 1008) ¶ 33.
`
`The ’990 Patent describes using this curve to calculate a point of maximum
`
`divergence “Pd.” Ex. 1001, 8:44-45. The point of maximum divergence is the
`
`11
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`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`point at which the greatest gap in relative distance dr in relation to the
`
`corresponding point on the linear distribution straight line (Fdc) can be observed.
`
`Ex. 1001, 8:45-49. In Figure 7B, the point of maximum divergence is at α=20
`
`degrees and has a relative distance dr equal to 0.5 from the center of the image
`
`(i.e., halfway between the center and the periphery of the image), while the
`
`corresponding point on the linear curve has a relative distance dr of 0.222. Ex.
`
`1001, 8:49-53. Per the ’990 Patent, the maximum divergence DIVmax of the
`
`distribution function Fd1 is calculated using the formula: DIVmax %=[[dr(Pd)-
`
`dr(Pdl)]/[dr(Pdl)]]*100, where dr(Pd) is the relative distance from the center of the
`
`image to the point of maximum divergence Pd, and dr(Pdl) is the relative distance
`
`from the center of the image to the linear distribution straight line, at the same field
`
`angle (here 20 degrees). Ex. 1001, 8:54-65. The DIVmax % for Figure 7B is
`
`+125% (i.e., [[0.5-0.222]/[0.222]]*100). Ex. 1001, 9:1-2.
`
`Figure 9 of the ’990 Patent (repeated below with annotation) purportedly
`
`provides a distribution function of another example of a panoramic objective lens.
`
`An image disk has been added to the left (shown with pink concentric circles) that
`
`corresponds to a linear distribution line (highlighted in pink) of a classical
`
`panoramic objective lens.
`
`12
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`

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`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
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`
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`Ex. 1001, Figure 9 (annotated).
`
`Figure 9 (highlighted differently below) depicts a panoramic objective lens
`
`
`
`where there is a compressed image zone (highlighted in orange below) between the
`
`center of the image and C30 (α=30°), an expanded image zone (highlighted in blue
`
`below) between C30 (α=30°) and C70 (α=70°), and finally a compressed image
`
`zone (highlighted in green below) between C70 (α=70°) and C90 (α=90°). Ex.
`
`1001, 9:58-64 and Fig. 9, shown below. An image disk has been added to the left
`
`that corresponds to the compressed image zone (orange circles) between the center
`
`13
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`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`of the image and C30 (α=30°), an expanded image zone (blue circles) between C30
`
`(α=30°) and C70 (α=70°), and finally a compressed image zone (green circles).
`
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`
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`Here, there are two maximum divergence points, Pd1 at α=30° (highlighted
`
`in pink above) and Pd2 at α=70° (highlighted in yellow above), at which the
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`maximum divergence is equal to -70% (i.e., [[0.1-0.333]/[0.333]]*100) and
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`+15.8% (i.e., [[0.9-0.777]/[0.777]]*100), respectively.2 Ex. 1001, 9:53-58. As is
`
`
`2 Claim 21, which depends from claim 17, only requires that there be one
`
`maximum divergence. The ± symbol, which is commonly used to indicate either
`
`the + or the – symbols, represents above and below the linear function,
`
`respectively. This is confirmed by the fact that the Patent Owner in the
`
`corresponding district court litigation only identified one maximum divergence
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`14
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`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
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`clear from Figure 9, the compressed image zones (highlighted in orange and green
`
`on the chart) have gradients lower than the gradient of the linear distribution
`
`function, while the expanded image zone (highlighted in blue) has a gradient
`
`higher than the gradient of the linear distribution function.
`
`The ’990 Patent states that a panoramic objective lens of the alleged ’990
`
`Patent invention should have a maximum divergence of at least ±10% compared to
`
`a linear distribution function, such that the image obtained has at least one
`
`substantially expanded zone and at least one substantially compressed zone. Ex.
`
`1001, 4:11-21, 9:6-12.
`
`Summary of the Prosecution History
`B.
`The application that resulted in the ’990 Patent was filed on November 12,
`
`2003, and purports to be a continuation of Application No. PCT/FR02/01588, filed
`
`on May 10, 2002. Ex. 1001. The ’990 Patent claims foreign priority to FR
`
`Application 01 06261 filed on May 11, 2001. Ex. 1001. Without acquiescing to
`
`the above claims of priority, all prior art relied upon herein predates even the
`
`earliest claimed priority date of May 11, 2001. As the filing date is before March
`
`16, 2013, Pre-AIA 35 U.S.C. applies.
`
`
`point in the accused products as purportedly meeting this claim limitation. See Ex.
`
`1011 at 6, 10, 14, 18, 22.
`
`15
`
`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`During the original prosecution of the ’990 Patent, Fisher (Ex. 1006), and
`
`foreign counterparts of Baker (Ex. 1005) and Nagaoka (Ex. 1004) (i.e., EP 0 695
`
`085 and EP 1 004 915, respectively), were cited to the Examiner by the Applicant.
`
`The Examiner failed to appreciate the teachings of such cited prior art, and issued a
`
`first-action allowance on Sept. 14, 2004. Ex. 1002 at 31-34. The Examiner’s
`
`reasons for allowance (pp. 2-3) were:
`
`The prior art fails to teach a combination of all the
`claimed features as presented, for example, in
`independent claims 1 and 17, which include a 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 panoramic
`image obtained has at least one substantially expanded
`zone and at least on[e] substantially compressed zone.
`
`Ex. 1002 at 32-33.
`
`As explained below, however, independent claims 1 and 17 were later
`
`cancelled during reexamination of the ’990 Patent in light of the substantial new
`
`questions of patentability raised by each of Fisher, Baker, and Nagaoka.
`
`16
`
`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`Summary of the Reexamination of the Patent
`C.
`On September 3, 2014, Panasonic System Networks Co., Ltd. (“Panasonic”)
`
`petitioned for inter partes review of the ’990 Patent (“Panasonic IPR”). IPR2014-
`
`01438, Paper 2. On November 21, 2014, the parties in that proceeding filed a joint
`
`motion to terminate the Panasonic IPR due to settlement (id., Paper 9), which was
`
`granted on November 26, 2014 (id., Paper 11). On the same day, the Panasonic
`
`IPR was terminated, the Patent Owner requested ex parte reexamination of claims
`
`1-4, 6-7, 10-11, 15-20, 22-23, and 25 of the ’990 Patent using the same art from the
`
`then-terminated Panasonic IPR. Ex. 1003 at 100, 328-329. The challenged claim
`
`in this present petition for IPR, claim 21, was not subject to the reexamination
`
`or the Panasonic IPR of the patent. However, independent claim 17, from which
`
`claim 21 depends, was subject to reexamination. Also, independent claim 1, which
`
`is similar in scope to claim 17, was subject to the reexamination. The
`
`reexamination included as prior art to claims 1 and 17, the following references:
`
`• U.S. Patent No. 6,128,145 to Nagaoka (Ex. 1004).
`
`• U.S. Patent No. 5,686,957 to Baker (Ex. 1005)
`
`• U.S. Patent No. 3,953,111 to Fisher, et al. (Ex. 1006)
`
`Ex. 1003 at 329-330. Reexamination was requested, inter alia, with respect to
`
`independent claims 1 and 17 in view of each of these references alone. Id. Likely
`
`realizing that the prior art clearly rendered independent claim 1 unpatentable,
`
`17
`
`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`
`Patent Owner filed along with the reexamination request a preliminary amendment
`
`cancelling claim 1. Ex. 1003 at 341.
`
`On January 9, 2015, the Patent Office granted the Patent Owner’s request for
`
`ex parte reexamination of the ’990 Patent, finding that the request raised
`
`substantial new questions of patentability with respect to claims 1-4, 6, 7, 10, 11,
`
`15-20, 22, 23, and 25 of the ’990 Patent and agreeing that each of Nagaoka, Baker
`
`and Fisher separately raised substantial new questions of patentability with respect
`
`to both independent claims 1 and 17. Ex. 1003 at 52-63.
`
`On January 29, 2015, the Office issued an Office Action rejecting
`
`independent claim 173 as being anticipated by each of Nagaoka, Baker, and Fisher.
`
`Ex. 1003 at 30, 36-39. In response, Patent Owner filed an Amendment on
`
`February 12, 2015, cancelling claim 17. Ex. 1003 at 19.
`
`On May 8, 2015, the Patent Office issued a reexamination certificate,
`
`which, among other things, cancelled independent claims 1 and 17. Ex. 1003 at
`
`1-3; Ex. 1001, Ex Parte Reexamination Certificate.
`
`
`3 A substantial new question of patentability was found for claim 1, but claim 1
`
`was later cancelled by a preliminary amendment so it was not addressed in the
`
`initial Office Action.
`
`18
`
`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`
`V. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that the ’990 Patent is available for IPR, and that
`
`Petitioner is not barred or estopped from requesting IPR challenging the claims of
`
`the ’990 Patent under 37 C.F.R. § 42.101.
`
`B. Claims for Which Review Is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100 et seq. of claim 21 of the ’990 Patent.
`
`Statutory Grounds of Challenge
`C.
`Petitioner requests that claim 21 be cancelled as unpatentable under pre-AIA
`
`35 U.S.C. § 103. All of the following references are prior art under pre-AIA 35
`
`U.S.C. § 102(b) because each published more than one year prior to the earliest
`
`possible effective U.S. filing date of the ’990 Patent, i.e., May 10, 2002.
`
`• U.S. Patent No. 6,128,145 (“Nagaoka”, Ex. 1004) issued Oct. 3, 2000.
`
`• U.S. Patent No. 5,686,957 (“Baker”, Ex. 1005) issued Nov. 11, 1997.
`
`• U.S. Patent No. 5,861,999 (“Tada”, Ex. 1007) issued Jan. 19, 1999.
`
`Petitioner submits the following grounds of unpatentability:
`
`Ground
`1
`2
`
`Statute(s)
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Reference(s)
`Tada
`Tada and Nagaoka
`
`Claim(s)
`21
`21
`
`19
`
`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`3
`
`35 U.S.C. § 103
`
`Tada and Baker
`
`21
`
`The claim constructions, reasons for unpatentability, and specific evidence
`
`
`
`
`
`supporting this request are detailed below.
`
`D. Level of skill of a person having ordinary skill in the art
`A person of ordinary skill in the relevant art (“POSA”) in the subject matter
`
`claimed and disclosed in the ’990 Patent at the time of the invention 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. Chipman Dec. (Ex. 1008) ¶ 41.
`
`Proposed Claim Constructions
`E.
`Pursuant to 37 C.F.R. § 42.200, the claims of the ’990 Patent shall be
`
`construed in this proceeding “using the same claim construction standard that
`
`would be used to construe the claim[s] in a civil action.” As such, the claims
`
`should be interpreted according to the principles outlined in Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc). This analysis proceeds from the
`
`perspective of “how a person of ordinary skill in the art understands a claim term.”
`
`Id. at 1313. Because, however, “patentees frequently use terms idiosyncratically”
`
`the Federal Circuit recognizes that “the specification may reveal a special
`
`20
`
`

`

`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`
`definition given to a claim term” or “the specification may reveal an intentional
`
`disclaimer, or disavowal, of claim scope by the inventor.” Id. at 1314-16.
`
`“panoramic objective lens”
`1.
`“Panoramic objective lens” should be construed to mean a super-wide or
`
`ultra-wide angle objective lens. Chipman Decl. (Ex. 1008) ¶ 44. An example
`
`provided in the ’990 Patent of such a lens is a “fisheye” lens. Ex. 1001, 1:18-20
`
`(“The device comprises a digital camera 1 equipped with a panoramic objective
`
`lens 2 of the ‘fish-eye’ type, having an angular aperture on the order of 180°”)
`
`(emphasis added); Chipman Decl. (Ex. 1008) ¶ 44. A fisheye lens is a super-wide
`
`or ultra-wide angle objective lens. Chipman Decl. (Ex. 1008) ¶ 44.
`
`“optical means for projecting…”
`2.
`Claim 21 is the only claim at issue in this Petition. Claim 21 depends from
`
`claim 17, which was rejected as anticipated by three references during
`
`reexamination and subsequently cancelled by the patent owner (see Section IV(C)).
`
`Patent Owner is expected to argue for patentability based on the limitation(s) of
`
`dependent claim 21, and not based on claim 17, consistent with Patent Owner’s
`
`cancellation of claim 17 during reexamination.
`
`Although not expected to be the subject of any dispute in this proceeding,
`
`Petitioner addresses the “optical means for projecting…” limitation of cancelled
`
`claim 17.
`
`21
`
`

`

`
`
`Petition for IPR of U.S. Patent No. 6,844,990 (Claim 21)
`Attorney Docket No. 002664-8002
`
`Claim 17 (cancelled; rejected as anticipated during reexamination)
`
`17. A panoramic objective lens comprising: optical means for
`
`projecting a panorama into an image plane of the objective lens, the
`
`optical means 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 a panoramic
`
`image obtained by means of the objective lens comprises at least one
`
`substantially exp