`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner
`v.
`COREPHOTONICS, LTD.,
`Patent Owner
`———————
`
`IPR2020-00487
`U.S. Patent 9,661,233
`_______________
`
`
`PETITIONER’S REPLY
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`Petitioner’s Reply
`
`IPR2020-00487 (Patent No. 9,661,233)
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`Table of Contents
`
`2. 
`
`2. 
`3. 
`
`B. 
`
`C. 
`
`I. 
`II. 
`
`III. 
`
`Introduction ...................................................................................................... 1 
`A POSITA would have been motivated to combine Golan and Martin. ......... 1 
`A.  Golan and Martin are analogous art to the ’233 Patent. ........................ 1 
`1. 
`Golan, Martin, and the ’233 Patent are all in the imaging
`systems field of endeavor. ........................................................... 2 
`Golan and Martin are each pertinent to the problem
`addressed in the ’233 Patent. ...................................................... 3 
`Petitioner has established reasons for selecting Martin to combine
`with Martin. ........................................................................................... 5 
`1. 
`Patent Owner ignores that Golan and Martin address the
`same problem, and advantages of Martin’s critical alignment
`solution thereto. ........................................................................... 6 
`Differences between Golan and Martin are not fundamental. .... 8 
`Patent Owner’s hypothecated differences are contrary to
`knowledge in the art. ................................................................. 11 
`Beyond identifying a problem, record evidence establishes how and
`why Golan and Martin would have been combined. .......................... 15 
`Secondary Considerations ............................................................................. 15 
`A.  No nexus. ............................................................................................. 16 
`1. 
`Patent Owner is not entitled to a presumption of nexus. .......... 16 
`2. 
`Patent Owner fails to prove nexus. ........................................... 18 
`Praise/licensing lacks nexus and is self-serving. ................................ 21 
`B. 
`Patent Owner did not show commercial success. ............................... 23 
`C. 
`D.  No failure of others.............................................................................. 24 
`E. 
`No concrete evidence of copying. ....................................................... 25 
`VI.  Conclusion ..................................................................................................... 27 
`V. 
`Certificate of Word Count ............................................................................. 28 
`CERTIFICATE OF SERVICE ............................................................................ 29 
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`PETITIONER’S EXHIBIT LIST
`Updated: April 22, 2021
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`
`
`
`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`
`
`APPL-1001
`APPL-1002
`APPL-1003
`APPL-1004
`APPL-1005
`
`APPL-1006
`APPL-1007
`APPL-1008
`APPL-1009
`
`APPL-1010
`
`APPL-1011
`
`APPL-1012
`APPL-1013
`
`APPL-1014
`APPL-1015
`
`U.S. Patent No. 9,661,233 to Shabtay et al. (the “’233 Patent”)
`Prosecution File History of the ’233 Patent (the “’251 App”)
`Declaration of Dr. Fredo Durand
`CV of Dr. Fredo Durand
`U.S. Patent Application Publication No. 2012/0026366 to Golan
`et al. (“Golan”)
`U.S. Patent 8,081,206 to Martin et al. (“Martin”)
`U.S. Patent 7,990,422 to Ahiska et al. (“Ahiska”)
`U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`U.S. Patent Application Publication No. 2008/0030592 to
`Border et al. (“Border”)
`U.S. Patent Application Publication No. 2012/0063736 to
`Simmons et al. (“Simmons”)
`Barbara Zitova, Image registration methods: a survey, 2003
`(“Barbara” or “Barbara Zitova”)
`U.S. Patent No. 8,553,106 to Scarff (“Scarff”)
`Richard Szeliski, Computer Vision: Algorithms and
`Applications, 2011 (“Szeliski”)
`U.S. Patent No. 8,854,432 to Orimoto (“Orimoto”)
`U.S. Patent Application Publication No. 2012/0019704 to Levey
`et al. (“Levey”)
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`APPL-1016
`
`APPL-1017
`
`APPL-1018
`APPL-1019
`
`APPL-1020
`APPL-1021
`
`APPL-1022
`
`APPL-1022
`-
`APPL-1039
`(New) APPL-
`1040
`(New) APPL-
`1041
`APPL-1042
`(New) APPL-
`1043
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`
`
`Petitioner’s Reply
`
`IPR2020-00487 (Patent No. 9,661,233)
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`Xiong, et al., “A critical review of image registration
`methods,” International Journal of Image and Data Fusion,
`June 2010 (“Xiong”)
`Ralph E. Jacobson et al., The Manual of Photography:
`photographic and digital imaging, 9th Edition, 2000
`(“Jacobson”)
`U.S. Patent No. 7,801,364 to Urban et al. (“Urban”)
`Hansen, et al., “Online continuous stereo extrinsic parameter
`estimation,” 2012 IEEE Conference on Computer Vision and
`Pattern Recognition, June 2012 (“Hansen”)
`U.S. Patent No. 9,571,731 to Shabtay, et al. (“’731 Patent”)
`U.S. Patent Application Publication No. 2014/0362274 to
`Christie, et al. (“Christie”)
`Anil K. Jain, Fundamentals of Digital Image Processing, 1989
`(“Jain”)
`RESERVED
`
`Supporting Declaration of Dr. Fredo Durand to the Reply
`(“Supp. Decl.”)
`Eli Saber deposition transcript, April 14, 2021 (“Saber
`Deposition”)
`RESERVED
`Microsoft Computing Dictionary 2002 (“Microsoft Computing
`Dictionary”)
`
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`(New) APPL-
`1044
`(New) APPL-
`1045
`(New) APPL-
`1046
`(New) APPL-
`1047
`
`(New) APPL-
`1048
`
`(New) APPL-
`1049
`(New) APPL-
`1050
`(New) APPL-
`1051
`(New) APPL-
`1052
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`Petitioner’s Reply
`
`IPR2020-00487 (Patent No. 9,661,233)
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`U.S. Patent No. 4,303,316 to McElveen (“McElveen”)
`
`U.S. Patent No. 4,429,328 to Jones et al. (“Jones”)
`
`Christopher A. Mayhew, Texture and Depth Enhancement for
`Motion Pictures and Television, 1990 (“Mayhew”)
`Corephotonics, “iPhone 7 Plus switches between cameras
`when zooming in and out,” August 2, 2017,
`https://www.youtube.com/watch?v=8iJorjnz0JM
`(“Corephotonics iPhone 7 Plus Video”)
`Corephotonics, “Corephotonics Dual Camera Zoom in & out -
`No jump,” August 2, 2017,
`https://www.youtube.com/watch?v=EKvNv3VfcPs
`(“Corephotonics No Jump Video”)
`Dictionary of Science and Technology, 2007
`
`New Oxford American Dictionary, 2010 (“New Oxford”)
`
`Webster’s Third New International Dictionary, 1993
`(“Webster”)
`Vision III Imaging, Inc., “v3 Tea Party Digital Cinema
`Demo,” Feb 22, 2013,
`https://www.youtube.com/watch?v=RpozOoMey1Q
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`
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`I.
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`
`
`Introduction
`For reasons discussed in the Petition and elaborated below, the challenged
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`claims of the ’233 Patent are unpatentable. Patent Owner’s argument that a
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`POSITA would not have been motivated to combine Golan and Martin completely
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`ignores Petitioner’s reasons to combine and the supporting evidence. In addition,
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`Patent Owner’s alleged objective indicia of non-obviousness carry no weight
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`because there is no nexus between Patent Owner’s alleged evidence and the
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`challenged claims, and the alleged indicia are insufficient to overcome Petitioner’s
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`strong showing of obviousness even if there were a nexus.
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`II. A POSITA would have been motivated to combine Golan and Martin.
`A. Golan and Martin are analogous art to the ’233 Patent.
`
`References analogous to the challenged patent qualify as prior art for inter
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`partes review. Petitioner is not required to “in its Petition” “affirmatively predict
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`and preempt all arguments against a reference’s status as ‘prior art,’ including
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`whether it is analogous.” Apple Inc. v. Qualcomm Inc., IPR2018-01245, Paper 39,
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`16. A reference may be (1) “in the field of…endeavor,” or (2) “reasonably
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`pertinent to the particular problem with which the inventor was concerned.” In re
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`Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Golan and Martin each meet both
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`standards. APPL-1040, ¶¶2-10.
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`1.
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Golan, Martin, and the ’233 Patent are all in the imaging
`systems field of endeavor.
`The field of the ’233 Patent is properly understood to be imaging systems,
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`including digital cameras. APPL-1040, ¶3; APPL-(APPL-1001), 6:14-16 (“FIG.
`
`1A shows…an embodiment of a dual-aperture zoom imaging system (also referred
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`to simply as “digital camera” or “camera”), 1:17-18; (APPL-1002), 271-289.
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`As explained in Petition, like the ’233 Patent, Golan and Martin are all in the
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`field of imaging systems, and more specifically, imaging systems including digital
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`cameras generating video output images using two imaging sections having
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`different points of view. APPL-1040, ¶4; Petition, 17-18; (APPL-1005), FIG. 1,
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`[0009], [0036]; see also id., Abstract, [0015]; (APPL-1006), FIG. 1, 3:6-13, 3:32-
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`35, 4:10-15; (APPL-1041), 43, 55-59 (Patent Owner’s own expert providing a
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`broad description of the field). Patent Owner does not dispute this fact.
`
`To the extent that Patent Owner relies on its characterization of the ’233
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`Patent as “thin digital cameras with optical zoom operating in both video and still
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`mode” (POR, 2) as the patent’s alleged field of endeavor to somehow exclude
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`Golan and Martin, that is inappropriately narrow. APPL-1040, ¶5; “[F]ield of
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`endeavor…is not limited to the specific point of novelty, the narrowest possible
`
`conception of the field, or the particular focus within a given field.” Unwired
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`Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016); see also Wyers v.
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`Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
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`2.
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Golan and Martin are each pertinent to the problem
`addressed in the ’233 Patent.
`A reference is “reasonably pertinent” if it “logically would have commended
`
`itself to an inventor’s attention in considering his problem.” In re ICON Health &
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`Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007).
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`Here, Golan and Martin are each pertinent to the problem addressed in the
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`’233 Patent, namely, “a ‘jump’ (discontinuous) image change” “[w]hen a dual-
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`aperture camera switches the camera output between sub-cameras or points of
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`view.” APPL-1040, ¶6; (APPL-1001), 10:32-34; see also Petition, 17-19; (APPL-
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`1005), [0015] (electronic calibration “facilitates continuous electronic zoom with
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`uninterrupted imaging, when switching back and forth between…[first and] second
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`image sensor array[s].”); Martin, 5:51-55 (critical alignment “to achieve a stable
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`autostereoscopic display,” in video/moving images when switching between
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`alternating views).
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`If Patent Owner is arguing that Martin is non-analogous because a POSITA
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`would only consider Martin applicable to achieving a stable autostereoscopic
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`display, Patent Owner is incorrect. APPL-1040, ¶7. Martin applies its critical
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`alignment teaching broadly to “generating a set of aligned parallax images,” and
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`does not limit these teachings to autostereoscopic displays or three-dimensional
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`(3D) perception. (APPL-1006), compare claim 11 (no recitation of
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`autostereoscopy) with claim 1 (reciting “[a] method of generating an
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`autostereoscopic display”); see also (APPL-1006), 3:6-14 (describing “[a] second
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`
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`aspect of the invention includes a system for generating a set of aligned parallax
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`images”). A POSITA would have understood that the autostereoscopic display of
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`Martin teaches generating video using images from different points of view, albeit
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`with 3D perception, just like the ’233 Patent. APPL-1040, ¶7.
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`A POSITA would have recognized that Martin’s assignee, “Vision III
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`Imaging, Inc.” and co-inventor Mayhew (see Martin, (73), (75)) had a long history
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`of applying autostereoscopic techniques to generate depth-enhanced video. APPL-
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`1040, ¶8; see. e.g., (APPL-1046); (APPL-1052). Further, multiple references cited
`
`in Martin explain that autostereoscopy generates videos with time consecutive
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`images enhanced for 3D perception. APPL-1040, ¶9;see, e.g., (APPL-1045),
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`FIGS. 10a-10e, 7:61-8:15; (APPL-1044), FIG. 2, 6:60-64, 8:68-9:11. Thus, a
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`POSITA would have considered Martin’s critical alignment and its additional
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`features like “the ability to zoom in/out” ((APPL-1006), 4:47-50) to have obvious
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`uses in generating digital zoom video outputs with reduced jump when switching
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`between images. APPL-1040, ¶9; Wyers v. Master Lock Co., 616 F.3d 1231, 1238
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`(Fed. Cir. 2010).
`
`In both this proceeding and prosecution of parent ’233 Patent, Patent Owner
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`attempts to disqualify references individually by recharacterizing the jump problem
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`in the ’233 Patent as requiring “during zooming.” APPL-1040, ¶10; Response, 1
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`(“reducing parallax jump effects during zoom using registration and position
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`
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`matching”), 39-40; (APPL-1002), 314. However, Patent Owner fails to identify
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`support in the patent itself that a POSITA would limit relevant teachings regarding
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`“jump effects” due to parallax to such an overly specialized context. The ’233
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`Patent explains that the jump occurs “[w]hen a dual-aperture camera switches the
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`camera output between sub-cameras or points of view…,” without any limit on the
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`context of that switching, much less zooming. (APPL-1001), 10:32-34. Moreover,
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`it was well-known to a POSITA that such a jump problem is not limited to zoom,
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`and that “widely used image processing technique[s]” for addressing jumps (e.g.,
`
`calibration, image registration or matching) were used in applications with and
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`without zoom. APPL-1040, ¶10; (APPL-1007), 9:44-52, 4:58-62, 10:2-5; (APPL-
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`1012), Title, 4:16-26.
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`B.
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`Petitioner has established reasons for selecting Martin to combine
`with Martin.
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`Patent Owner argues that “Golan and Martin are so fundamentally different
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`that a POSITA, starting with Golan’s digital camera, would not have selected
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`Martin’s autostereoscopic system in the first place to explore possible
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`modifications to Golan’s digital zoom.” Response, 17. Patent Owner’s arguments
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`fail because it: (i) ignores that Golan and Martin address the same problem, and the
`
`advantages of Martin’s solution to that same problem; (ii) incorrectly characterizes
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Golan and Martin as fundamentally different; and (iii) fails to support its bald
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`assertion that differences between Golan and Martin would have prevented a
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`POSITA from selecting Martin to combine with Golan. APPL-1040, ¶11.
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` 1.
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`Patent Owner ignores that Golan and Martin address the
`same problem, and advantages of Martin’s critical
`alignment solution thereto.
`Patent Owner argues that a POSITA would not have plucked Martin “out of
`
`the sea of prior art” to combine “particularly” with Golan. POR, 16-17, 26.
`
`However, Patent Owner fails to provide any evidence of its competing “sea of
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`prior art” references. Patent Owner speculates that, in an “‘ocean’ of other
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`references,” a POSITA could have been led to combine Golan with, for example,
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`Zitova “over” Martin. See POR, 26. Patent Owner’s argument is irrelevant,
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`however: that a POSITA also may have combined Golan with other references
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`does not controvert the fact that a POSITA would have been motivated to combine
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`Golan with Martin. APPL-1040, ¶12. Patent Owner’s argument incorrectly
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`assumes, and notably fails to cite any legal authority for its assumption, that a
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`petitioner must show that a POSITA would have had relatively greater motivation
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`to combine with one reference over all others.
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`To the contrary, the Federal Circuit has affirmed that a patent challenger is
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`not required to prove that a POSITA would have preferred the asserted
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`combination over other possible combinations. Infineum USA L.P. v. Chevron
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Oronite Co. LLC, 2021 WL 210722, *4 (Fed. Cir. Jan. 21, 2021) (non-
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`
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`precedential) (rejecting “the notion that a patent challenger seeking to demonstrate
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`obviousness must prove that a person of ordinary skill would have been motivated
`
`to select one prior art disclosure over another” and finding it improper to require
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`patent challenger “to prove that a person of ordinary skill would have selected [one
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`reference] over other prior art”).
`
`Regardless, Patent Owner fails to identify a single other reference—let alone
`
`a “sea” or “ocean”—that could have been combined with Golan to solve the same
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`problem to which Golan, Martin, and the ’233 Patent are directed, or that teaches
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`the advantages of Martin’s critical alignment solution to that problem. APPL-
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`1040, ¶13. Patent Owner notably fails to do so for the sole “example” of an
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`alternative to Martin, the Zitova reference, that it identifies.
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`In contrast, Golan and Martin are pertinent to the same problem, and a
`
`POSITA would have been motivated to select Martin to combine with Golan,
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`because each of them “logically would have commended itself to an inventor’s
`
`attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d
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`1374, 1379–80 (Fed. Cir. 2007); APPL-1040, ¶15.
`
`Suggesting that the “sea of prior art” includes references describing general
`
`image registration, Patent Owner also completely ignores the advantages of
`
`Martin’s critical alignment solution by casting it as a “conventional image
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`registration technique[].” POR, 36. As explained in the Petition and by Dr.
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`
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`Durand, modifying Golan’s system to incorporate Martin’s critical alignment
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`would produce a system with (1) more accurate position matching for continuous
`
`transition when switching in video and (2) an option to match only a region of
`
`interest instead of the whole image, both are advantages of Martin’s critical
`
`alignment solution. Petition, 19; APPL-1040, ¶¶16-25. Patent Owner fails to
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`provide evidence of a “sea of prior art” like Martin with those advantages. Id.
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`2.
`
`Differences between Golan and Martin are not
`fundamental.
`Patent Owner argues, citing Nichia Corp. v. Everlight Americas, Inc., 855
`
`F.3d 1328 (Fed. Cir. 2017) and Adidas AG v. Nike, Inc., 963 F.3d 1355 (Fed. Cir.
`
`2020), that a POSITA would not have selected Martin to combine with Golan
`
`because Golan and Martin “are fundamentally dissimilar, address different
`
`problems, and prescribe different techniques to address those different problems.”
`
`POR, 21, 23-24. The argument is conclusory, and lacks explanation as to why any
`
`alleged differences of Golan and Martin would have prevented a POSITA from
`
`selecting Martin to combine with Golan. Patent Owner’s reliance on Nichia Corp.
`
`and Adidas AG is inapposite. APPL-1040, ¶26.
`
`First, in Nichia Corp., the Federal Circuit affirmed no motivation to
`
`combine where references “disclose[d] different structures, resolve[d] dissimilar
`
`problems, and propose[d] dissimilar solutions,” explaining “that artisans…face
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`myriad design challenges because small design changes may cause unpredictable
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`
`
`
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`results and because design considerations often pull in multiple directions.” 855
`
`F.3d 1328, 1339.
`
`Unlike Nichia Corp., the relevant teachings of Golan and Martin address the
`
`same problem, and a relation between solutions of Golan and Martin was well-
`
`known. Pet. 18-19. As explained in the Petition, it was well known to a POSITA
`
`that, for seamless transition between two images (e.g., from imaging sections
`
`having different points of views and/or wider and narrower fields of view) in zoom
`
`video, when a fixed calibration between the two imaging sections (e.g., electronic
`
`calibration of Golan) is insufficient (e.g., because calibrated alignments change),
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`registration of the two images (e.g., critical alignment of Martin) is beneficial for
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`accurate position matching to video output images. Petition, 18-19; (APPL-1007),
`
`4:58-62, 10:2-5; (APPL-1014), 1:63-2:1; (APPL-1019), 1059; (APPL-1009),
`
`[0041]-[0042]; (APPL-1003), ¶57; APPL-1040, ¶27. In fact, Martin itself explains
`
`that “proper alignment and color/luminance matching of the cameras can be
`
`difficult,” and describes critical alignment of region of interest (e.g., using
`
`transformation coefficients) to achieve a stable transition. (APPL-1006), 2:49-50;
`
`5:51-58; APPL-1040, ¶27.
`
`Patent Owner does not dispute such a relation between solutions of Golan
`
`and Martin, arguing only that the applications for which the solutions in the two
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`references are applied are in some unexplained way fundamentally different.
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`
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`
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`APPL-1040, ¶28. Nor does it argue “myriad design challenges” like Nichia Corp.
`
`because of unpredictable results or complex design considerations. See, e.g., POR,
`
`16 (“[Patent Owner’s primary objection is not] whether “one is technologically
`
`‘incompatible’ with the other for having ‘different objectives’ [or] whether
`
`Petitioner has presented sufficient evidence showing a “relation between electronic
`
`calibration and registration for position matching”).
`
`Second, unlike differences in Adidas AG, differences alleged here by Patent
`
`Owner are not fundamental, such that a POSITA would not have selected Martin to
`
`combine with Golan. In Adidas AG, the Board had found that one reference
`
`(Reed) “[taught] pre-seaming” whereas the other reference “involve[d] seaming the
`
`textile element after it ha[d] been cut from the textile structure.” The Board
`
`therefore determined that the combination would “require the alteration of the
`
`principles of operation of Reed or would render Reed inoperable for its intended
`
`purposes.” Adidas AG, 963 F.3d 1355, 1358-159. Here, neither Patent Owner nor
`
`its expert identify, or even argue that, any alleged difference between Golan and
`
`Martin would require the alteration of the principles of operation of Golan or
`
`render Golan inoperable for its intended purposes. APPL-1040, ¶29.
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`3.
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Patent Owner’s hypothecated differences are contrary to
`knowledge in the art.
`Patent Owner asserts a hodge-podge of differences between Golan and
`
`Martin—but none are supported by evidence beyond its expert’s ipse dixit. As
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`discussed above at II.B.2, Patent Owner fails to explain why any of these
`
`differences would have prevented a POSITA from selecting Martin to combine
`
`with Golan. APPL-1040, ¶30.
`
`First, Patent Owner asserts that “‘video’ at issue in Martin is not the same
`
`‘video’ contemplated by Golan” because Golan’s “suitable frame refresh rate” is
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`24 frames-per-second (fps) and Martin’s viewing rate (the frequency with which
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`views in the sequence are changed) is 3-6Hz POR, 28. Patent Owner
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`mischaracterizes Golan and Martin, and fails to consider the difference between
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`“suitable frame refresh rate” and “viewing rate.” APPL-1040, ¶31.
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`Specifically, neither Golan nor Martin is limited to a particular fps or a
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`particular switching frequency. APPL-1040, ¶32;see, e.g., (APPL-1005), [0051]
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`(describing “suitable frame refresh rate”); (APPL-1005), 4:30-32 (describing “any
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`desired viewing rate.”)
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`Moreover, Martin’s viewing rate and Golan’s frame refresh rate are different
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`video properties. APPL-1040, ¶34. As such, even if Martin’s viewing rate and
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`Golan’s frame refresh rate have different values, they do not indicate “one is not
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`like the other” as asserted by Patent Owner (Response 28). Instead, Martin’s
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`viewing rate is “a frequency at which the parallax image views are changed,” i.e.,
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`the frequency at which Martin switches back and forth between its two cameras,
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`measured in Hertz. (APPL-1006), 4:27-28; 9:6-7; APPL-1040, ¶34. A frame
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`refresh rate, on the other hand, measures the number of frames displayed per
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`second. Id. As supported by references cited by Martin, a POSITA would have
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`understood that Martin teaches that its video would be output in a video format
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`suitable for a display (e.g., 24fps for TV) while having a different viewing rate
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`(e.g., about 3-6Hz). APPL-1040, ¶34; see, e.g., (APPL-1006), 3:35-39, 6:29-30;
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`(APPL-1045), 10:59-11-30 (video with 3D illusion alternating points of view at
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`“[6-15] changes per second,” while the “images are displayed at a rate of 24
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`images per second”).
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`Second, Patent Owner asserts that Martin’s switching “refers to the
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`alternating display of two specific image frames that is refreshed three to six times
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`per second,” and is therefore different from Golan’s “switching” between different
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`sensors during zoom. POR, 29. But Patent Owner’s incorrect suggestion that
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`Martin repeatedly switches between the same two specific image frames is
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`contrary to what was well-known in autostereoscopic display and Martin’s
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`teachings. APPL-1040, ¶35.
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`As shown in annotated FIGS.10a-10c of Jones (cited in Martin) below, a
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`POSITA would have understood that alternating images from different points of
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`view provides switching between time consecutive images from different points of
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`view. APPL-1040, ¶36; (APPL-1045), 4:10-15 (illustrating switching between
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`time consecutive images A1-A12 and B1-B12 where “the images A1 through A12
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`and B1 through B12 may be arranged on a single film strip as shown in FIG. 10c
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`wherein four consecutive images from point of origin A are followed by four
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`consequence images from point of origin B, resulting in a change of point of origin
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`at a rate of 6 times per second”); see also (APPL-1044), FIG. 2.
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`(APPL-1045), FIGS. 10a-10c (annotated)
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`Similarly, as shown in FIG. 4a below, Martin teaches that a “set of aligned
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`images can be displayed in sequential order,” like a “a set of six parallax images
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`(e.g., three right-left pairs) in matched alignment,” switching, for example, using
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`time consecutive images. (APPL-1006), 6:57-61. A POSITA would have
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`understood that, like Jones, Martin teaches, as shown in FIG. 4a below, generating
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`a video by alternating images, where each of images A-F may include one or more
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`time consecutive frames from the same point of view. APPL-1040, ¶37.
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`(APPL-1006), FIG. 4a
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`As such, a POSITA would likewise have understood that Martin and Golan
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`teach displaying images from different points of view that are consecutive in time,
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`and teach “switching” between images from different points of view. APPL-1040,
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`¶38.
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`Third, to the extent that there are differences of Golan and Martin (e.g.,
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`related to “video” or “switching”), Patent Owner has not established that any such
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`difference is incompatible with combining Martin’s critical alignment teaching into
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`Golan. No asserted differences would have prevented a POSITA from selecting
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`Martin to combine with Golan. APPL-1040, ¶39.
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`C. Beyond identifying a problem, record evidence establishes how and
`why Golan and Martin would have been combined.
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`
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`Patent Owner appears to argue, citing Metalcraft of Mayville, Inc. v. The
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`Toro Co., 848 F.3d 1358 (Fed. Cir. 2017), that Petitioner’s motivation to combine
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`evidence merely establishes “knowledge of a problem” and “a motivation to solve
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`it,” which is different from a motivation to combine. POR, 25-26. But the
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`argument fails to substantiate the analogy to Metalcraft of Mayville. Unlike the
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`patent challenger in Metalcraft of Mayville, Petitioner here, supported by Dr.
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`Durand’s testimony, has established motivation to combine by providing detailed
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`explanation as to both how and why Golan and Martin would be combined to arrive
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`at the claimed invention, in addition to identifying a problem and a motivation to
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`solve it. APPL-1040, ¶40; Petition, 17-19, 34-35. In fact, Patent Owner does not
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`directly dispute how Golan and Martin would be combined to arrive at the claimed
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`invention. POR, 21; APPL-1040, ¶41.
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`III. Secondary Considerations
`Patent Owner’s purported evidence of secondary considerations of non-
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`obviousness is not entitled to any weight. APPL-1040, ¶42. As explained below,
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`there is no nexus between Patent Owner’s evidence and the challenged claims.
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`Even if there were a nexus (which there is not), Patent Owner’s evidence is
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`insufficient to overcome Petitioner’s strong showing of obviousness. Asyst Techs.,
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008). Combining Martin
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`with Golan is the predictable use of prior art elements according to established
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`functions, and as such, evidence of secondary considerations would be inadequate
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`to establish non-obviousness. Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d
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`1333, 1344 (Fed. Cir. 2013).
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`Patent Owner presents various theories: industry praise/licensing,
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`commercial success, and failure of others/copying. POR, 30-41. None has merit.
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`A. No nexus.
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`For secondary considerations evidence to be accorded substantial weight, the
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`“patentee bears the burden of showing that a nexus exists” to the claimed
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`invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019)
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`(citation omitted). Patent Owner fails to carry its burden.
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`Patent Owner is not entitled to a presumption of nexus.
`1.
`Patent Owner incorrectly contends that there is a “presumption of nexus”
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`alleging that its evidence “is tied specifically to Patent Owner’s proprietary
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`‘smooth transition’ algorithms and software (one of Patent Owner’s six core
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`technologies).” POR, 32. Patent Owner’s purported analysis is insufficient to
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`establish the presumption.
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`However, “nexus is only presumed when the product tied to the evidence of
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`secondary considerations ‘is the invention disclosed and claimed.’” Fox Factory,
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`944 F.3d at 1374; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072
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`(Fed. Cir. 2018).
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`Here, Patent Owner does not argue, let alone prove with evidence, that any
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`secondary consideration is coextensive with any specific feature of the challenged
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`claims. Patent Owner provides no evidence or analysis indicating how to allocate
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`any alleged secondary consideration (industry praise, licensing, commercial
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`success, failure of others, or copying) to any particular features in the challenged
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`claims. Instead, Patent Owner simply invokes “smooth transition” technology as a
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`talisman and without meaningful definition.
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`Patent Owner admits that “smooth transition” technology (however defined)
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`is only one of Patent Owner’s six core technologies, POR, 32, but provides no
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`persuasive evidence to attribute its allegations of praise, licensing, or commercial
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`success to any particular “smooth transition” feature claimed or to any particular
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`one of its six allegedly core technologies, let alone to any specific challenged
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`claims. In fact, Patent Owner’s reliance on the same underlying allegations in
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`other PTAB proceedings involving different patents of different scope casts
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`considerable doubt on the argument. See, e.g., IPR2020-00905, POR, 41;
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`IPR2020-00905, 74-75 (admitting that licensing discussions “specifically would
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`have encompassed lens design and image fusion technology” in addition to smooth
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`transition technology).
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`Petitioner’s Reply
`IPR2020-00487 (Patent No. 9,661,233)
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`Patent Owner fails to prove nexus.
`2.
`To carry its burden to establish nexus, Patent Owner would need to prove
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`
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`that “the evidence of secondary considerations is the “direct result of the unique
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`characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373-74. “To
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`determine whether the patentee has met that burden, we consider the
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`correspondence between the objective evidence and the claim scope.” Id. at 1373.
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`Here, Patent Owner fails to meet its burden because it does not show that
`