UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2020-00200
`
`U.S. Patent No. 10,084,991
`_______________
`
`PATENT OWNER’S SUR-REPLY IN INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,084,991
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2020-00200
`
`U.S. Patent No. 10,084,991
`_______________
`
`PATENT OWNER’S SUR-REPLY IN INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,084,991
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2020-00200
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`Patent No. 10,084,991
`Patent Owner’s Sur-Reply
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`TABLE OF CONTENTS
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`I.
`II.
`
`Page
`
`
`INTRODUCTION .......................................................................................... 3
`APPLE FAILS TO SHOW THAT ASMUSSEN ALONE OR
`COMBINED WITH BEAR AND LINDSTROM RENDERS
`OBVIOUS THE CLAIMED “NETWORK INTERFACE” ........................... 4
`A. Asmussen Alone Does Not Disclose a “Network Interface” ............... 4
`B.
`Apple Failed to Provide Any Motivation to Combine
`Asmussen, Bear, and Lindstrom. ......................................................... 9
`III. ASMUSSEN ALONE OR IN COMBINATION WITH BEAR DOES
`NOT TEACH CLAIM 1(E)’S “RENDERING THE CAMERA
`OPERATIVE” LIMTIATION ...................................................................... 11
`A. Asmussen Alone Does Not Teach Claim 1(e) ................................... 11
`B.
`Asmussen in Combination With Bear Does Not Teach Claim
`1(e) ...................................................................................................... 17
`IV. MARLEY’S TEACHINGS .......................................................................... 23
`A. Apple’s Arguments Regarding Claim 1(c) Are Moot. ....................... 23
`B.
`Apple’s Arguments Regarding Claim 5 Are Unpersuasive. .............. 23
`CONCLUSION ............................................................................................. 24
`
`
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`V.
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`Case IPR2020-00200
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`Patent No. 10,084,991
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Artic Cat Inc. v. Polaris Indus.,
`795 Fed. Appx. 827 (Fed. Cir. 2019) .................................................................. 10
`Grain Processing Corp. v. American-Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988)) ..................................................................... 21, 23
`In re NTP,
`654 F.3d 1279 (Fed. Cir. 2011) .............................................................. 20, 21, 23
`InTouch Techs., Inc. v. VGo Communs., Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 10
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) ............................................................................ 9
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 20, 21, 23
`Polaris Indus. v. Artic Cat, Inc.,
`882 F.3d 1056 (2018) .............................................................................. 20, 21, 23
`Sirona Dental SystemsGMBH v. Institut Straumann AG,
`892 F.3d 1349 (Fed. Cir. 2018) ............................................................................ 9
`
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`PATENT UPDATED OWNER’S EXHIBIT LIST
`
`Description
`October 9, 2018 Notice Letter from Maxell to Apple
`March 16, 2020 Scheduling Order
`May 31, 2019 Scheduling Order
`Docket From District Court Action
`January 8, 2020 Minute Order
`March 18, 2020 Markman Order
`August 28, 2019 Minute Order
`September 17, 2019 Minute Order
`Maxell’s Disclosure of Asserted Claims and Infringement Contentions
`Maxell’s Final Election of Asserted Claims
`Apple’s Final Election of Prior Art
`Apple’s Invalidity Contentions
`Asmussen Chart from District Court Action
`March 6, 2017 Scheduling Order from Maxell v. ZTE
`March 19, 2018 Scheduling Order from Maxell v. ZTE
`Docket from District Court Action
`Standing Order re COVID-19
`April 20, 2020 Scheduling Order from District Court Action
`Declaration of Tiffany A. Miller
`Transcript of September 28, 2020 Deposition of Dr. Lippman
`Declaration of Dr. Maja Bystrom
`U.S. Patent No. 7,864,051
`Supplemental Declaration of Dr. Maja Bystrom
`Zoom Help Center – Group HD Follow
`https://support.zoom.us/hc/en-us/articles/207347086-Group-HD
`(last accessed, February 4, 2021)
`Skype for Business client video resolutions
`https://docs.microsoft.com/en-us/skypeforbusiness/plan-your-
`
`Exhibit #
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
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`2025
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`deployment/clients-and-devices/video-resolutions (last accessed,
`February 4, 2021)
`VisionTek GeForce 256 DDR graphics card - GF 256 - 32 MB
`Specs
`https://www.cnet.com/products/visiontek-geforce-256-ddr-
`graphics-card-gf-256-32-mb/ (last accessed, February 4, 2021)
`CNET Oct. 10, 2002 review of the Ezonic EZCam
`https://www.cnet.com/reviews/ezonics-ezcam-review/ (last
`accessed, February 4, 2021)
`CNET Oct. 10, 2002 review of the Creative WebCam Go
`https://www.cnet.com/reviews/creative-webcam-go-review/ (last
`accessed, February 4, 2021)
`CNET January 16, 2003 review of the Veo Connect
`https://www.cnet.com/reviews/veo-connect-review/ (last accessed,
`February 4, 2021)
`CNET Oct. 10, 2002 review of the Philips ToUcam XS
`https://www.cnet.com/reviews/philips-toucam-xs-review/ (last
`accessed, February 4, 2021)
`User-Centered Design Process Map,
`https://www.usability.gov/how-to-and-tools/resources/ucd-
`map.html (last accessed, February 6, 2021)
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`2026
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`2029
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`2030
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`2031
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`I.
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`INTRODUCTION
`Apple’s Reply fails to tackle the flaws in the prior art and motivations to
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`combine the references set forth in the Petition.
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`Regarding the “network interface” limitation in claim 1(a), Apple fails to
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`demonstrate that Asmussen discloses this limitation alone. Apple’s expert, Dr.
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`Lippman does not address key technical issues that undercut his opinions that
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`receiver 750 of Figure 30 could be integrated with tuner 603 (in Figures 11a or 12)
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`to meet the network interface limitation. Nor should the Board consider Apple’s
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`belated “Asmussen in combination with Lindstrom” Ground demonstrating claim
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`1(a) is met as such ground was not raised in the Petition.
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`Regarding the “rendering the camera operative” limitation in claim 1(e),
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`Apple fails to demonstrate that Asmussen alone or in combination with Bear
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`disclose this limitation. Indeed, the Board preliminarily determined that Asmussen
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`alone does not disclose the “rendering the camera operative” limitation. See
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`Institution Decision, at 64. Moreover, as to the Asmussen and Bear combination,
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`the proposed motivations to combine are hindsight reconstructions that use the
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`’991 Patent “as a guide through the maze of prior art references” and should be
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`rejected.
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`Finally, Apple’s arguments as to Marley are either moot (claim 1(c)) or rely
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`on its expert’s opinions rooted in hindsight, which should be accorded no weight
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`(claim 5).
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`Accordingly, for the reasons discussed herein and in Patent Owner’s
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`Response, Apple has failed to carry its burden to show that any challenged claim of
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`the ’991 Patent is unpatentable.
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`II. APPLE FAILS TO SHOW THAT ASMUSSEN ALONE OR
`COMBINED WITH BEAR AND LINDSTROM RENDERS OBVIOUS
`THE CLAIMED “NETWORK INTERFACE”
`A. Asmussen Alone Does Not Disclose a “Network Interface”
`Asmussen alone does not render the network interface limitation obvious.
`
`Apple has misconstrued Patent Owner’s response to the mapping of the limitation
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`in the Petition, and Dr. Lippman does not explain how it would be possible, much
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`less obvious to a POSITA, to combine receiver 750 together with tuner 603 in
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`Asmussen Fig. 12a or Fig. 11 to form a network interface. See Reply at 1-10; Ex.
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`1003, ¶¶109-119; see also Institution Decision 46-53.
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`For example, Dr. Lippman states:
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`Figure 12a is an exemplary embodiment of how the receiver 750 and
`the transmitter 730 would be integrated into the set top terminal.
`Figure 12a is generally referring to the level A, B and C hardware
`upgrades (see Asmussen, 5:24-25), but Fig. 12a’s disclosure of
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`including receiver components 601 indicates to me that Asmussen
`recognizes the set top terminal may be upgraded to include certain
`functionality and associated hardware, such as receiver components
`601. Thus, Fig. 12a illustrates an exemplary way a receiver 750 and
`transmitter 730 would be integrated into the STT. Asmussen teaches
`that the receiver components 601 and transmission components 604
`are representative of “various” components that perform the same
`functions. Asmussen, 26:57-63. Additionally, Fig. 12a depicts the
`tuner and receiver components 601 as receiving signals from the
`CATV network, which includes both video program information and
`videocall information when the video call information is transmitted
`to the set top terminal via the cable television network. Additionally,
`there are other embodiments, such as Fig. 11, that also depict the
`hardware components of a tuner and receiver as receiving signals
`from the cable television network.
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`Ex. 1003, ¶116.
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`As the primary basis of his opinion on integrating receiver 750 into the set
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`top terminal, Dr. Lippman states that “Asmussen teaches that the receiver
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`components 601 and transmission components 604 [of Fig 12a] are representative
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`of ‘various’ components that perform the same functions [as receiver 750 and
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`transmitter 730].” See id. However, Dr. Lippman misreads Asmussen and
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`provides only conclusory opinions regarding the alleged functional sameness. See
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`Ex. 2021, ¶¶89-94.
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`Comparing Figure 11—which Dr. Lippman also points to in explaining his
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`opinion—with Figure 12a, the correspondence between the processing circuitry
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`block 340 (Figure 11) and the receiver components block 601 (Figure 12a) is
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`readily seen. Processing circuitry block functionality and components are
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`described as follows:
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` Processing circuitry 340 (Figure 11) is describes as: “All cable
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`signals intended for reception on the subscriber's TV are accessed by
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`the tuner 603 and subsequently processed by the processing circuitry
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`340. This processing circuitry 340 typically includes additional
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`components for descrambling, demodulation, volume control and
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`remodulation on a Channel 3 or 4 TV carrier.” Ex. 1004, 26:6-11.
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` Receiver components block 601 (Figure 12a) is described as: “As seen
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`in the figure, CATV input signals are received by the set top terminal
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`220 using a tuner 603 and various receiver components described
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`above (but denoted generally at 601 in FIGS.12a and 12b).” Id. at
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`26:57-60. And the “various receiver components described above”
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`phrase is referring to earlier in column 26, which describes processing
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`circuity 340 and the descrambling, demodulation, volume control and
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`remodulation operations.
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`None of these operations, however, include a “receiver” operation as needed
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`for receiver block 750. In other words, when reading column 26, “receiver
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`components 601” is not an undefined black box that receiver 750 can be dropped
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`into according to Dr. Lippman. See Ex. 1003, ¶¶116. Thus, Figure 12 does not
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`“illustrate[] an exemplary way a receiver 750 and transmitter 730 would be
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`integrated into the STT.” See Ex. 1003, ¶116.
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`Moreover, Dr. Lippman further explains that “Fig. 12a depicts the tuner and
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`receiver components 601 as receiving signals from the CATV network, which
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`includes both video program information and videocall information when the video
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`call information is transmitted to the set top terminal via the cable television
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`network.” Ex. 1003, ¶116. While tuner 603 does “tune to the proper frequency of
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`the channel or program desired” (Ex. 1004, 26:26-27) it also must “subsequently
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`instruct the processing circuitry 340 to begin descrambling of this channel or
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`program.” Id. at 26:27-29. Thus, the functionality of block 340 (in Figure 11) and
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`hence block 601 (in Figure 12a), cannot simply be replaced by the functionality of
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`receiver 750, since receiver 750 is not (nor comprises the functionality of) a
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`descrambler. Thus, if receiver 750 and transmitter 730 were inserted in place of
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`blocks 601 and 604 (i.e., Dr. Lippman’s “same functions” assertion, Ex. 1003,
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`¶116), respectively, Figure 12a would not function as described.
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`Nor has Dr. Lippman described how or why a POSITA would be motivated
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`to integrate the separate signal processing functions (channel decoder 755,
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`decryptor 760, demultiplexer synchronizer 765 and decoders 770 and 775) of Fig.
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`30 (Ex. 1004, 50:44-53) into Figure 12a. In fact, these operations can be
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`significantly different than the descrambling, demodulation, volume control and
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`remodulation of processing circuitry 340 (Figure 11) and receiver components 601
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`(Figure 12a).
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`Finally, merely because Asmussen contemplates different hardware
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`modifications to the set top box does not provide the required motivation to
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`combine. Apple and Dr. Lippman have failed to demonstrate that there is an
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`“express motivation” to modify Figures 11 or 12a with the receiver 750 for video
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`calls. See Reply, at 9-10. Figure 30 is labeled “Set Top Terminal 220” and
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`described as “a block diagram of a set top terminal with video calling capabilities”
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`(Ex. 1004, 6:1-2, Fig. 30). But Figure 30 and the corresponding description is
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`completely silent as to what other hardware components are in this embodiment of
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`the set top box. And, although Asmussen states that “the set top terminal 220 is
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`augmented with additional features, as shown in Fig. 30,” (id. 49:43-46), this
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`disclosure alone does not allow Apple or Dr. Lippman to cherry-pick which other
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`hardware components or embodiments of the set top box to use to put forward an
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`obviousness case. There must be reasoning for such combinations and why the
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`combinations would be obvious to a POSITA. Such reasoning is absent here.
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`Thus, Asmussen alone (or in view of Bear, which Apple does not rely on for
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`claim 1(a)) does not disclose the claimed “network interface.”
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`B. Apple Failed to Provide Any Motivation to Combine Asmussen,
`Bear, and Lindstrom.
`Despite Apple unambiguously asserting that Ground 4 comprises the three-
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`reference combination of Asmussen, Bear, and Lindstrom, Apple failed to properly
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`set forth motivations to combine all three references. Accordingly, Apple has not
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`shown that the Asmussen, Bear, and Lindstrom combination discloses claim 1(a).
`
`Apple attempts to shortcut the process by relying on its motivations to
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`combine Asmussen and Lindstrom to show that the “network limitation” is met,
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`but Bear is unambiguously absent from this discussion.1 See Petition, at 20-29 (no
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`1 Apple cannot rely solely on motivations to combine Asmussen and Lindstrom
`without Bear because Apple did not forward that ground in its Petition and is
`precluded from doing so now. See 35 U.S.C. 311-319. Indeed, the Federal Circuit
`has made it clear that the Board cannot institute a petition on grounds not
`presented, and the same applies to Petitioners. See Sirona Dental SystemsGMBH
`v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018); Koninklijke
`Philips N.V. v. Google LLC, 948 F.3d 1330, 1135-36 (Fed. Cir. 2020).
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`discussion of Bear regarding claim 1(a) in Ground 1), 37-39 and 41-45 (discussing
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`Bear only with respect to claims 1(e) and 1(g)); Reply, at 10-13.
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`Apple claims that Patent Owner is employing a “‘gotcha’ argument with a
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`feigned ignorance or confusion that is pointless.” Reply at 13. Putting aside the
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`unnecessary invective, Patent Owner is doing no such thing.
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`Rather, the fact remains that neither Apple nor Dr. Lippman presented any
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`motivations to combine all three references—Asmussen, Bear, and Lindstrom—for
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`Ground 4. See Artic Cat Inc. v. Polaris Indus., 795 Fed. Appx. 827, 832-34 (Fed.
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`Cir. 2019) (affirming the Board's conclusion that Arctic Cat failed to prove that
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`there was a motivation to combine the prior art references Sunsdahl, Suzuki, and
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`Brown and thus failed to prove that the '501 patent was unpatentable as obvious”);
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`InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1349-53 (Fed. Cir.
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`2014) (reversing the district court’s judgment of invalidity noting, in part, that
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`defendant’s expert “also succumbed to hindsight bias in her obviousness analysis”
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`who “failed to address why one of ordinary skill in the art at the time of the
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`invention, which was 2001, would be motivated to combine these three
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`references.”) Thus, the Board should reject any arguments relating to “Asmussen
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`in view of Lindstrom” (see Petition at 69-73; Reply at 10-13; Ex. 1003, at ¶¶188-
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`198), and consider that Apple never submitted motivations to combine all three of
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`the references as a whole for the claimed “network interface” limitation.
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`III. ASMUSSEN ALONE OR IN COMBINATION WITH BEAR DOES
`NOT TEACH CLAIM 1(E)’S “RENDERING THE CAMERA
`OPERATIVE” LIMTIATION
`Apple misstates and mostly ignores Patent Owner’s arguments that
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`conclusively show that Asmussen alone does not teach claim 1(e), a conclusion
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`reached also by the Board. See Institution Decision, at 64. Patent Owner’s
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`arguments rely on the plain text of Asmussen and are fully supported by expert
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`testimony regarding how a POSITA would also read Asmussen. See Ex. 2021,
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`¶¶102-126. Apple’s Reply, on the other hand, relies on Dr. Lippman to conjure
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`straw man arguments and provide unsupported and conclusory opinions that are
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`divorced from the text of Asmussen and Dr. Bystrom’s actual opinions. Similarly,
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`Apple cannot show that the combination of Asmussen and Bear discloses claim
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`1(e), and Dr. Lippman’s motivations to combine Asmussen with Bear are rooted in
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`hindsight. Thus, the Board should uphold the patentability of claim 1 over the
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`combination of Asmussen and Bear.
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`A. Asmussen Alone Does Not Teach Claim 1(e)
`Contrary to Apple’s assertions in its reply, Patent Owner rebutted Apple’s
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`“central argument” and demonstrated that Asmussen alone does not disclose the
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`“rendering the camera operative” limitation. See Patent Owner Response, at 15-
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`28; see also Patent Owner Preliminary Response, at 29-40; Ex. 2021, ¶¶102-122.
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`Indeed, the Board agreed with Patent Owner and did not find that Asmussen alone
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`teaches claim 1(e). See Institution Decision at 64 (“Based on this preliminary
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`record…the combined teachings of Asmussen and Bear meet the recited
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`limitation.” (emphasis added)). Apple ignores much of Patent Owner’s arguments
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`demonstrating Asmussen’s failure to teach claim 1(e) and misreads the arguments
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`that it did include in its Reply.
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`For example, Apple claims that Patent Owner’s “discussion of the ‘pause’
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`mapping is confusingly non-responsive to the Petition’s mapping” when the
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`opposite is true. See Reply, at 14. Apple is, again, trying to read in the automatic
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`pausing disclosures in other parts of Asmussen to the default state of the video
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`camera passage, in relation to the video call options menu, which it relies on for
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`this limitation. See id.; see also Petition, at 34-37; Ex. 1004, 21:34-42. When
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`looking at that passage, Asmussen specifically included the word “automatic” with
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`respect to the program pausing feature and instances when calls shall be messaged.
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`Asmussen did not, however, associate “automatic” (i.e., without further user input)
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`to the changing state of the camera when an inbound video call is received.2 See
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`Ex. 1004, 21:34-42. Asmussen knew how to describe his ideas in the context of
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`“automatic” and did not state in column 21 what Apple believes he did.
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`
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`Moreover, in response to Patent Owner’s arguments and Dr. Bystrom’s
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`declaration (Ex. 2021, ¶¶102-122), Apple relies on an unsupported and conclusory
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`supplemental declaration from Dr. Lippman. See Reply, at 14-15; Ex. 1054, ¶¶3-
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`10. Dr. Bystrom’s opinions are simply how a POSITA reads the disclosure, what it
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`actually says and not “proposed modifications” as Apple claimed. See Reply at 14.
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`As Dr. Bystrom explained, given Apple and Dr. Lippman’s arguments about the
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`“on” state of the camera, a natural reading of Asmussen is that if the camera is
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`“on” in the default state, it is on at all times. See generally Ex. 2021, ¶¶102-122.
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`Dr. Lippman opines, on Reply, that such a configuration is undesirable and
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`would require unnecessary processing and waste resources. Reply, at 14-15; Ex.
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`2 Similarly, Apple’s response regarding Patent Owner’s discussion of the caller ID
`functionality in Asmussen is nonsensical. Reply at 16. Patent Owner is not
`arguing that claim 1(e) requires the video to be displayed on the display upon
`receipt of the video call. See id. Patent Owner’s highlighting of the caller ID
`feature merely underscores that, at place in Asmussen where one would expect
`some evidence that the camera is rendered operative upon receipt of the videocall,
`Asmussen is silent. See Patent Owner Response, at 19-23.
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`1054, ¶3-10. But cameras are, and have been, designed to be left “on.” For
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`example, Bear—which Apple relies on for multiple grounds in its Petition—
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`contemplates this very scenario
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`Because the state of the capture button 308 may not be readily
`apparent to a user, a camera indicator light 306 such as an LED may
`be used in conjunction with the capture button 308. The camera
`indicator light 306 may be adjacent the camera lens 304 or integrated
`into the capture button 308. The camera indicator light 306 may
`indicate state via various colors and flash patterns, e.g., steady state
`unlit when the camera is off, steady state red when video capture is
`taking place, a slowly blinking red indicator light when there is an
`incoming video call, or steady state green when the camera is used
`for proximity detection.
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`See Ex. 1005, 7:50-60 (emphasis added). Thus, Bear itself refutes Dr. Lippman’s
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`claim that Dr. Bystrom’s opinions are “without any basis in the prior art.” See Ex.
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`1054, ¶3.
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`Dr. Lippman’s unnecessary consumption of power counter-argument is not
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`grounded in fact and should be accorded no weight. See Ex. 1054, ¶¶4-7.
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`Nowhere does Dr. Bystrom claim that a POSITA would rely on batteries to power
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`the camera in Asmussen—this is a straw man argument that Dr. Lippman has
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`created. Compare Ex. 2021, ¶109 with Ex. 1054, ¶¶4-5. And Dr. Lippman ignores
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`the undisputed fact that individuals keep countless everyday items plugged in an
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`AC outlet at all times—e.g., televisions, printers, ovens, microwaves, and, set top
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`boxes—and those items consume power even though the user is not actively using
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`those items. Ex. 2023, ¶5 (Bystrom Supp. Dec.); see also Ex. 2020, 60:15-61:22
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`(Dr. Lippman testifying that he did not understand what is meant by a “wake-up”
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`function—i.e., on but not operative—in the context of electronic devices). Thus, a
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`POSITA would understand that leaving a camera in an “on” state, particularly in
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`the age of increased home security/monitoring, is not uncommon and does not
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`results in engineering concerns that would require elaborate design solutions for
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`removal of heat generation. See Ex. 2023, ¶5 (Bystrom Supp. Dec.); see also Ex.
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`1054, ¶¶6-7.
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`Similarly, Dr. Lippman’s counter-argument
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`regarding unnecessary
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`consumption of computational resources (i.e., processing) is equally unavailing.
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`Ex. 1054, ¶8; see also Reply, at 14-15. Continual storage of a few frames when a
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`camera is “on” is not burdensome on either processing (no additional processing
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`needs to be done) or memory (minimal). See Ex. 2023, ¶6 (Bystrom Supp. Dec.).
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`For example, common webcam video sizes are currently 1080p or 720p, which
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`translate to images sizes of 1920x1080 or 1280x720 pixels. See Ex. 2023, ¶7
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`(Bystrom Supp. Dec.); Exs. 2024 and 2025 (describing currently maximum
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`supported size for video calls). Thus, using these image sizes (1280x720 or
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`1920x1080 pixels), and presuming 3 bytes per pixel are stored (e.g., one byte each
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`for red, green, and blue colors), modern webcams save frames of data that are on
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`the order of 3MB or 6MB, respectively, without any processing required for
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`compression.3 See id.
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`And this conclusion is not limited to modern hardware—common graphics
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`cards in the 2000 timeframe, years before the priority date of the ’991 Patent
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`(September 2008) and around the time of Asmussen’s filing (June 2000), such as
`
`the NVidia’s GeForce 256 with its 32MB of memory, could handle storage of
`
`multiple frames, without resorting to use of any other system memory even though
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`it supports display graphics only up to SXGA 1280x1024 pixels. See Ex. 2023, ¶8
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`(Bystrom Supp. Dec.); Ex. 2026; see also Ex. 2027 (Oct. 10, 2002 review of the
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`Ezonic EZCam having up to 640x480 pixels for video); Ex. 2028 (Oct. 10, 2002
`
`review of the Creative WebCam Go having up to 640x480 pixels for video); Ex.
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`2029 (January 16, 2003 review of the Veo Connect having up to 320x240 pixels
`
`
`3 Dr. Lippman repeats his position regarding lag time, but his supplemental
`declaration provides no support for his positions, does not provide a basis to find
`that Asmussen discloses this limitation (when it does not), and, thus, should be
`accorded no weight. Compare Ex. 1003¸ ¶141 with Ex. 1054, ¶¶9-10.
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`16
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`for video); Ex. 2030 (Oct. 10, 2002 review of the Philips ToUcam XS having up to
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`352x288 pixels for video).
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`
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`In sum, as demonstrated in Patent Owner’s Response (pp. 19-23) and herein,
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`Asmussen alone simply does not disclose the ‘rendering the camera operative”
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`limitation of claim 1(e). Apple’s Reply—heavy on overstatements and a
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`misreading of Patent Owner’s arguments—does not change the written words (or
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`lack thereof) in Asmussen.
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`B. Asmussen in Combination With Bear Does Not Teach Claim 1(e)
`First, Patent Owner’s argument are not based on “bodily incorporation” as
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`Apple claims. See Reply, at 16-19. Rather, Patent Owner’s description of Bear’s
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`disclosure merely illustrates that nearly all of Bear’s disclosure relates to video
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`capture applications using a camera with a lens cover. See Patent Owner
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`Response, at 26-27.
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`Second, regarding Petitioner’s motivation to combine arguments in its
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`Reply, Petitioner correctly states that the invention in Bear “can be used in
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`multiple computing systems and environments,” including a set top box. See
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`Reply, at 19. But context is important. The set top box “environment” is among a
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`laundry list of environments as follows:
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`The invention is operational with numerous other general purpose or
`special purpose computing system environments or configurations.
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`Examples of well-known computing systems, environments, and/or
`configurations that may be suitable for use with the invention include,
`but are not limited to: personal computers, server computers, hand-
`held or laptop devices, tablet devices, headless servers, multiprocessor
`systems, microprocessor-based systems, set top boxes, programmable
`consumer electronics, network PCs, minicomputers, mainframe
`computers, distributed computing environments that include any of
`the above systems or devices, and the like.
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`Ex. 1005, 3:66-4:9. And this is the only reference to a set top box in fourteen
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`columns worth of disclosure in Bear, which primarily relates to PC-based
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`teachings. See generally id. at Abstract, Figures 1-2, 4-11 (and corresponding
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`disclosure).
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`
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`But nowhere does Bear address or suggest solving the problems identified
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`by the ’991 Patent. See Patent Owner Response, at 28-34. Apple attempted to
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`reframe the problems solved by the ’991 Patent to make Bear appear more relevant
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`and to obscure Dr. Lippman’s reliance on hindsight, claiming that it is “pertinent to
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`a problem to be solved by the claimed invention in the ’991 Patent,” that being
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`“controlling a camera.” Petition at 12; Ex. 1003, ¶¶64-65; see also Petition at 39.
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`Apple’s reframing of Bear continues in its Reply, claiming that Bear “is directed to
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`the problem of providing user control (e.g., answering a phone call and interacting
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`with communications and media applications).” Reply, at 20. Apple and Dr.
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`Lippman are wrong.
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`The ’991 Patent does not solve such generic “user control” problems as
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`Apple suggests, but rather specific problems associated with answering video calls
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`while watching digital content on another display screen:
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`In the prior known technique as disclosed in JP-A-5-56190, the TV
`receiver and the videophone are arranged so that these are discrete
`devices which operate independently of each other. Upon receipt of an
`incoming telephone call at the videophone during watching a TV
`broadcast program by the TV receiver, a message which notifies
`arrival of such phone call is displayed on the TV receiver's display
`screen so that a user easily knows that there is an incoming phone call.
`In this event, the user must walk to a place at which this videophone is
`put and perform manual operations for startup of talking with a caller
`on the videophone. This is a time-consuming and troublesome work
`for the user who is watching his or her preferred TV broadcast
`program.
`
`In the case of not only starting a telephone call but also ending the
`phone call, the user is required to perform a manual operation for the
`phone call completion (e.g., putting a transceiver handset on a base
`unit or “cradle”). This operation also is performed at the location in
`which the videophone is placed.
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`In this way, traditionally, when there is an incoming phone call during
`watching a TV broadcast program by TV receiver, the user must move
`from a place at which he or she was there until then and perform
`manual operations for startup and completion of the phone call. These
`operations are time-consuming and troublesome works to the user.
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`Ex. 1001, 2:7-31.
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`Bear, however, is wholly silent on solving any of these problems. See Patent
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`Owner Response, at 28-34. Thus, Dr. Lippman’s focus on the passing mention of
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`set top boxes and launch of the A/V application in response to a phone call in Bear,
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`to the exclusion of the numerous other environments and the actual problems Bear
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`solves, is divorced from any suggestion that Bear is solving the problems set forth
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`in the ’991 Patent. Such myopic focus further underscores Dr. Lippman’s
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`hindsight-driven analysis to combine the PC-based system in Bear with the set top
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`system in Asmussen. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
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`(2007) (“A factfinder should be aware, of course, of the distortion caused by
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`hindsight bias and must be cautious of arguments reliant upon ex
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