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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
`
`TABLE OF CONTENTS
`
`Apple’s Reply Does Not Demonstrate That a POSITA Would Have
`
`Apple’s cursory “not discouraged” argument violates 37 C.F.R.
`
`INTRODUCTION .................................................................. 1
`I.
`II. APPLE FAILS TO ESTABLISH A MOTIVATION TO
`COMBINE GOLAN, MARTIN, AND TOGO ........................... 2
`A. Apple’s untimely arguments as whether Golan and Martin are
`“analogous art” to the ‘898 patent should be rejected. .................... 2
`B.
`Been Motivated to Combine Golan and Martin. ............................. 4
`1.
`§ 42.6(a)(3) and should be disregarded. ..................................... 5
`Apple’s Reliance on Martin is Incorrect .................................... 7
`2.
`B. Martin’s Critical Alignment is Not Necessary or Usable in Golan . 8
`C.
`Motivated to Combine Golan, Martin and Togo ........................... 12
`III. GROUND 1 – APPLE STILL FAILS TO DEMONSTRATE
`UNDER OVER GOLAN IN VIEW OF MARTIN AND TOGO 13
`Limitation [1.4] ............................................................................. 13
`A.
`B.
`Limitation [1.5] ............................................................................. 15
`Claim 4 .......................................................................................... 16
`C.
`IV. GROUND 2 - APPLE FAILS TO DEMONSTRATE THAT
`MARTIN, TOGO, AND LEVEY ........................................... 16
`
`CLAIM 9 IS UNPATENTABLE OVER GOLAN IN VIEW OF
`
`Apple Fails to Demonstrate that a POSITA Would Have Been
`
`THAT CLAIMS 1, 4, 8, 12 AND 15 ARE UNPATENTABLE
`
`i
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`
`
`GROUND 3 – APPLE FAILS TO DEMONSTRATE THAT
`CLAIMS 11 AND 19 ARE PATENTABLE OVER GOLAN IN
`
`CLAIMS 10 AND 20 ARE UNPATENTABLE OVER GOLAN
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`V.
`VIEW OF MARTIN, TOGO, AND BORDER ........................ 17
`VI. GROUND 4 - APPLE FAILS TO DEMONSTRATE THAT
`IN VIEW OF MARTIN, TOGO AND PARULSKI ................. 17
`VII. SECONDARY CONSIDERATIONS / OBJECTIVE INDICIA
`OF NON-OBVIOUSNESS .................................................... 18
`VIII. CONCLUSION .................................................................... 20
`
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`ii
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`Cases
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`TABLE OF AUTHORITIES
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) .................................................................. 4
`
`Gen. Access Sols., Ltd. v. Sprint Spectrum L.P.,
`811 F. App’x 654 (Fed. Cir. 2020) ............................................................. 6
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) .................................................................... 5
`
`Innogenetics, N.V. v. Abbott Labs,
`512 F.3d 1363 (Fed. Cir. 2008) ................................................................ 13
`
`Snap, Inc. v. Blackberry Ltd.,
`IPR2019-00715, Paper 37 (Sept. 1, 2020) ................................................. 6
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .................................................................. 4
`
`Rules
`
`37 C.F.R. § 42.6(a)(3) ............................................................................ passim
`
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`Patent Owner’s Exhibit List
`
`
`2004
`
`2005
`
`Exhibit No.
`2001
`2002
`2003
`
`Description
`Declaration of John C. Hart, Ph.D.
`Curriculum Vitae of John Hart, Ph.D
`“Why You Should Use a Telephoto Lens for Landscape
`Photos” (https://www.naturettl.com/use-telephoto-lens-
`landscape-photos/)
`Complaint for Patent Infringement, Dkt. No. 1, Case No.
`19-cv-4809 (United States District Court, Northern Dis-
`trict of California)
`Answer to Complaint for Patent Infringement, Dkt. No.
`17, Case No. 19-cv-4809 (United States District Court,
`Northern District of California)
`Corephotonics Proposal: “Dual Aperture Image Fusion
`Technology, Proposed Engagement Framework” (June 22,
`2014)
`Email chain with emails dating from July and August 2014
`Email chain with emails dating from March 2015
`Email dated December 21, 2015
`Email chain with emails dating from August 2016
`Email dated May 23, 2013
`Email dated May 23, 2013
`Declaration of Eran Kali
`“Lenses for portraiture” excerpted from “Lenses Guide”
`by Margaret Brown, Photo Review Media Publishing,
`Aug. 2014. Available at https://www.photore-
`view.com.au/tips/lens-tips/lenses-for-portraiture.
`(New) 2015 Transcript of July 1, 2021 Video-Recorded Deposition of
`Fredo Durand, Ph.D.
`(New) 2016 Transcript of June 2, 2021 Video-Recorded Deposition of
`Fredo Durand, Ph.D. in IPR2020-00860, -00487
`
`
`2006
`
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`I.
`
`INTRODUCTION
`
`On Reply, Apple fails to rebut the main arguments made in Corepho-
`
`tonics’ response. Apple does not and cannot demonstrate that a person of or-
`
`dinary skill in the art (“POISTA”) would have been motivated to combine the
`
`completely different systems of Golan and Martin. Apple tries to pick and
`
`choose select portions of Martin while ignoring its fundamental goal of
`
`achieving an autostereoscopic display using parallax images. Because Golan
`
`and Martin obtain and process images in completely different ways, Apple
`
`instead provides an overly broad characterization of Martin while ignoring the
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`very significant ways it differs in function and solutions from Golan. These
`
`attempted distractions should be ignored. Finally, Apple improperly incorpo-
`
`rates into its reply 15 paragraphs and 1,821 words from the declaration of its
`
`expert to support three separate bare assertions rather than provide an expla-
`
`nation as required. This violates 37 C.F.R. § 42.6(a)(3) ’s prohibition on in-
`
`corporation by reference and these arguments must not be considered.
`
`Accordingly, the Board should reject Grounds 1-4 and find the chal-
`
`lenged claims of the ‘322 patent not unpatentable.
`
`
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`1
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`II. APPLE FAILS TO ESTABLISH A MOTIVATION TO
`COMBINE GOLAN, MARTIN, AND TOGO
`A. Apple’s untimely arguments as whether Golan and Martin are
`“analogous art” to the ‘898 patent should be rejected.
`As Corephotonics previously explained, Apple failed to apply the cor-
`
`rect test for whether Golan and Martin are “analogous art” to the ‘898 patent
`
`such that they could be considered as obviousness references. IPR2020-
`
`00861, Paper No. 14, Patent Owner’s Response (“POR”) at 23–31. Instead of
`
`applying the correct legal test, Apple only asserted that Golan and Martin were
`
`“analogous” because they are both in “the same field of endeavor.” IPR2020-
`
`00861, Paper No. 1, Apple’s Petition for Inter Partes Review of U.S. Patent
`
`No. 10,230,898 (“Pet.”) at 19.
`
`Apple’s reply seeks to belatedly correct its test for analogous all while
`
`continuing ignore the proverbial elephant in the room. As an initial matter,
`
`Apple’s belated attempt to correct its misapplication of the test for analogous
`
`art should be ignored as untimely. Further, Apple asserts without more that
`
`“Golan, Martin, and the ’898 Patent are in the same field of endeavor pertain-
`
`ing to imaging systems including digital cameras generating video output im-
`
`ages of the same scene from two imaging sections having different points of
`
`view.” IPR2020-00861, Paper No. 22, Petitioner’s Reply Brief (“Reply”) at 3.
`
`The video output images of Martin could not be more different than those of
`
`2
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`Golan and the ‘898 patent. Martin teaches displaying autostereoscopic images
`
`using alternating parallax images. Martin Ex. 1006, 1:16-20, 3:32-35, 4:10-
`
`15. Even Dr. Fredo Durand, Apple’s expert, agreed that Martin is involved in
`
`creating parallax images and generating autostereoscopic displays. Ex. 2015,
`
`July 1, 2021, Deposition of Fredo Durand, Ph.D., 30:23-31:9. There is no
`
`teaching in either Golan or the ‘898 patent of parallax images. In fact, parallax
`
`images would be undesirable in either Golan or the ‘322 patent, as both are
`
`directed toward achieving a smooth, continuous zoom. Golan Ex. 1005, ¶2;
`
`‘898 patent Ex. 1001, 3:16-17.
`
`Apple compounds this mischaracterization by asserting that Golan,
`
`Martin and the ‘897 patent all pertain to the problem of achieving “a continu-
`
`ous, smooth zoom in video mode.” Reply at 3. While the ‘897 patent is cer-
`
`tainly concerned with this issue, there is nothing in Martin that describes this
`
`concern. The cited portions of Martin (Ex. 1006, 5:51-55) are concerned with
`
`creating an autostereoscopic image, and do not mention effectuating a smooth,
`
`continuous zoom. Martin makes explicit that “[c]ritical alignment corresponds
`
`to a condition where the degree of alignment is sufficient to achieve a stable
`
`autostereoscopic display.” Ex. 1006, 5:53-55 (emphasis added). Thus, Apple
`
`is wrong in its characterization that Martin is pertinent to obtaining a
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`continuous, smooth zoom in video mode and wrong in in its characterization
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`that Martin is analogous art to the either Golan or the ‘898 patent. That Martin,
`
`Golan, and the ‘898 patent are all involved in imaging in some broad way is
`
`not sufficient to demonstrate that they are analogous. Therefore, Martin, Go-
`
`lan, and the ‘898 patent are not analogous art.
`
`B. Apple’s Reply Does Not Demonstrate That a POSITA Would
`Have Been Motivated to Combine Golan and Martin.
`Even assuming arguendo that Golan and Martin are analogous, deter-
`
`mining that prior art is analogous based on the field of endeavor is not suffi-
`
`cient, on its own, to show a motivation to combine that prior art. Apple Inc. v.
`
`Samsung Elecs. Co., 839 F.3d 1034, 1051 (Fed. Cir. 2016) (finding that “con-
`
`cluding that the references are within the scope and content of the prior art to
`
`be considered for obviousness (i.e. analogous art) does not end the inquiry”–
`
`–motivation to combine must still be shown). Apple fails to meet that burden.
`
`As Patent Owner’ noted in its initial Response, the core problem with
`
`Apple’s argument for combining Golan and Martin involves a more basic
`
`question: “whether [a] skilled artisan would have plucked one reference out
`
`of the sea of prior art ... and combined with conventional [] elements to ad-
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`dress some need present in the field.” WBIP, LLC v. Kohler Co., 829 F.3d
`
`1317, 1337 (Fed. Cir. 2016). This is because Golan and Martin are so
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`4
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`fundamentally different that a POSITA, starting with Golan’s digital camera,
`
`would not have selected Martin’s autostereoscopic system in the first place to
`
`explore possible modifications to Golan’s digital imaging system to create a
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`smooth, continuous zoom. However, Petitioner’s Reply continues in its at-
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`tempt to gloss over the differences between Martin and Golan.
`
`Martin says its invention is concerned with “overcoming one or more
`
`problems associated with the prior art three-dimensional image display sys-
`
`tems and methods.” See Ex. 1006, at 2:7–62. As noted above, nowhere does
`
`Martin contain any teaching about continuous zoom. As seen by the very por-
`
`tions of Martin cited by Apple, Martin is about “[c]ritical alignment corre-
`
`sponds to a condition where the degree of alignment is sufficient to achieve a
`
`stable autostereoscopic display.” Ex. 1006, 5:53-55 (emphasis added). Be-
`
`cause Martin is “directed to a different purpose” than either Golan or the ‘898
`
`patent, “the inventor would accordingly have had less motivation to consider
`
`it” to be “analogous art.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
`
`1.
`Apple’s cursory “not discouraged” argument violates 37
`C.F.R. § 42.6(a)(3) and should be disregarded.
`Apple asserts that:
`
`As explained in detail by Dr. Durand, each of the differences al-
`leged, including ‘different dependencies on the configuration of
`the camera pair’ and ‘approaches to alignment and the need for
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`camera calibration” (POR, 27-28), is based on mischaracteriza-
`tion of the references, supported only by Dr. Hart’s conclusory
`statements contrary to a POSITA’s knowledge, and would not
`have discouraged POSITA from applying Martin’s critical
`alignment teachings in Golan.
`
`Reply at 4. But this bare assertion contains no explanation or support beyond
`
`a citation to paragraphs 36-44 of Dr. Durand’s declaration (as well as numer-
`
`ous exhibits). Apple’s string citation incorporates en masse the whole of its 9-
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`paragraph, 1163-word “not discouraged” argument from Dr. Durand’s reply
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`declaration, thereby bringing its reply brief’s word count down to 5,593
`
`words, 7 words shy of the limit. Reply at 4. The argument should be disre-
`
`garded because it violates 37 C.F.R. § 42.6(a)(3)’s prohibition on incorpora-
`
`tion by reference of arguments from expert declarations into the IPR briefs
`
`without substantively explaining the arguments. See Gen. Access Sols., Ltd. v.
`
`Sprint Spectrum L.P., 811 F. App’x 654, 657–58 (Fed. Cir. 2020); Snap, Inc.
`
`v. Blackberry Ltd., IPR2019-00715, Paper 37, at 93 (Sept. 1, 2020) (incorpo-
`
`ration of 10 paragraphs from expert declaration violated rules). The Board
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`should “declin[e] to consider arguments that were not substantively presented
`
`in [Apple’s] briefing.” 811 F. App’x at 656.
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`2.
`Apple’s Reliance on Martin is Incorrect
`More importantly, Apple’s reliance on a POSITA using the critical
`
`alignment process in Martin is flawed and ignores that there is no evidence of
`
`the problem addressed by the ‘898 patent anywhere but in the disclosure of
`
`the ‘898 patent.
`
`Apple argues that for a “POSITA starting with Golan, the question
`
`would have been how to achieve/improve seamless transition (uninterrupted
`
`imaging) when switching between imaging sections in zoom video, given a
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`well-known problem that calibration between two cameras is alone insuffi-
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`cient (e.g., because of shocking, vibration, thermal variation, etc.).” Reply at
`
`5-6. But there is nothing in Golan that indicates that this is a problem for its
`
`structure.
`
`Further, there is nothing in Martin that addresses this problem or that
`
`discusses “a continuous, smooth zoom in video mode.” Dr. Durand has admit-
`
`ted there is no mention of a “continuous, smooth zoom in video mode” in
`
`Martin in other IPR proceedings involving these same parties. Ex. 2016, Dep-
`
`osition of Fredo Durand, Ph.D. in IPR2020-00860, -00487, 222:4–16. If this
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`were in fact a concern of a POSITA regarding the imaging system of Golan,
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`there is nothing in Martin that would cause that POISTA to consider it
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`teachings to create such a continuous, smooth zoom. Recognizing this defi-
`
`ciency, Apple now attempts to improperly modify its grounds for unpatenta-
`
`bility by apparently relying on the Ahiska patent (Ex. 1007). Reply at 6. This
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`untimely argument must be ignored. But even with Ahiska, there remains
`
`nothing in Martin about a continuous, smooth zoom. Tellingly, neither Apple
`
`nor its expert have identified any such teaching in Martin.
`
`Therefore, a POSITA, looking at the teachings of Golan (either alone
`
`or with Togo), would not have been motivated to combine it with Martin to
`
`achieve a smooth, continuous zoom.
`
`B. Martin’s Critical Alignment is Not Necessary or Usable in Golan
`
`Apple’s Reply also ignores how Martin’s critical alignment process is
`
`performed. Martin teaches a “critical alignment” where two “parallax” images
`
`can be aligned with one another. Ex. 1006, 4:56-61. This critical alignment is
`
`performed by “pattern matching or feature extraction algorithms” or by
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`“align[ing] the convergence points in the images based on calculated conver-
`
`gence points in the images” Id. at 5:8-21. Those images are then be displayed
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`in alternative views to produce the desired autostereoscopic effect. Id. at 4:32-
`
`39.
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`Notably, the calibration and critical alignment is performed after the
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`images are captured. Id. at 4:62-65. A user is required to select a reference
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`image from which the calibration and critical alignment process then pro-
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`ceeds. Id. Nowhere does Martin describe performing calibration and critical
`
`alignment before or while the images are being acquired. Fig. 2 of Martin is
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`abundantly clear that source images are acquired (step 20) and then alignment
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`parameters are applied afterwards (step 24).
`
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`Id. Dr. Durand admitted in his deposition that Martin describes determining
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`APPL-1006 / Page 3 of 11
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`the alignment offsets using the acquired images. Ex. 2015, July 1, 2021, Dep-
`
`osition of Fredo Durand, Ph.D., 49:11-15; 51:13-16. Moreover, determining
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`the alignment offsets and performing critical alignment in Martin both occur
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`after the images are acquired. Id. at 51:3-12; 45:12-25; Ex. 1006, 4:62-58. In
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`fact, Martin itself makes clear that the “transformation parameters in each pro-
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`cess may be continually adjusted until critical alignment is achieved.” Ex.
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`1006, 5:51-53. Thus, all aspects of critical alignment in Martin are based on
`
`the acquired images, and thus must be performed after the images are ac-
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`quired.
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`
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`This is in stark contrast to Golan, where calibration occurs prior to ob-
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`taining the images and alignment occurs during image acquisition. Both em-
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`bodiments of Golan, as shown in Figs. 2 and 4, the alignment offsets are
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`determined (steps 220, 420) and then applied when the image frame is ac-
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`quired (steps 250, 260, 450, 460):
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`APPL-1005 / Page 5 of 13
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`APPL-1005 / Page 3 of 13
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`Ex. 1005. Dr. Durand admitted in his deposition that Golan describes deter-
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`mining the alignment offsets before the image is acquired. Ex. 2015, July 1,
`
`2021, Deposition of Fredo Durand, Ph.D., 49:6-10. This is because the align-
`
`ment in Golan is computed at the time the imaging system is manufactured.
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`Id. at 49:6-10; 50:8-12; 56:4-15. The alignment offsets are then applied while
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`performing the zoom on the acquired image. Ex. 1005, ¶49.
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`Thus, a POSITA would not have been motivated to look to Martin to
`
`modify Golan. This is to be expected, as Golan and Martin are directed at two
`
`very different problems. Golan is concerned about achieving “a continuous
`
`electronic zoom for an image acquisition system.” Ex. 1005, ¶2. Martin, on
`
`the other hand, is concerned with “autostereoscopic imaging methods for pro-
`
`ducing two-dimensional images that, upon display, can be perceived to be
`
`three-dimensional without the use of special viewing aids.” Ex. 1006, 1:17-
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`20.
`
`Therefore, a POSITA would not have been motivated to combine Golan
`
`and Martin. For these reasons, Grounds 1-4 should be rejected and the claims
`
`of the ‘898 patent found not unpatentable.
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`C. Apple Fails to Demonstrate that a POSITA Would Have Been
`Motivated to Combine Golan, Martin and Togo
`Apple asserts that a POSITA would have known to modify Golan with
`
`Togo to “resolve any associated issues using teachings in the art.” Reply at 9.
`
`But as noted before, Golan’s system is designed with the understanding that
`
`both images are in perfect focus because, as Apple’s expert Dr. Durand admits
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`“the image sensor arrays are focused to the infinite.” Ex. 1040, ¶49. Nowhere
`
`does Apple point to other embodiments which are not focused to the infinite.
`
`Thus, Apple’s position is wrong.
`
`Moreover, Patent Owner is not requiring bodily incorporation of Togo’s
`
`specific structure/parts into Golan as Apple asserts. Reply at 9. Rather, Patent
`
`Owner has identified a crucial deficiency in the Petition: Apple provides no
`
`explanation as to how Golan’s camera system would be modified to imple-
`
`ment Togo’s measurement of subject distance Y and Togo’s parameters for
`
`distance, e.g. (“close distance A”). Apple’s Reply is of no help, as both it and
`
`Dr. Durand’s supporting declaration (Ex. 1040, ¶¶50, 73) continue to make
`
`the bare assertion that such a combination could be done without explaining
`
`how. Reply ay 9. A mere statement that Golan and Togo could be combined is
`
`not sufficient. Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1374 n.3 (Fed.
`
`12
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`Cir. 2008) (requiring “explanation as to how or why the references would be
`
`combined to produce the claimed invention”) (emphasis added).
`
`Moreover, even assuming arguendo that it could be done, that does not
`
`mean that a POSITA would have done it. Without an actual explanation as to
`
`how Togo could be incorporated into the Golan image system, there is no ev-
`
`idence that a POSITA would have been motivated to make this combination.
`
`III. GROUND 1 – APPLE STILL FAILS TO DEMONSTRATE
`THAT CLAIMS 1, 4, 8, 12 AND 15 ARE UNPATENTABLE UN-
`DER OVER GOLAN IN VIEW OF MARTIN AND TOGO
`A. Limitation [1.4]
`
`Apple argues that Patent Owner does not dispute the combination of
`
`Golan and Togo, but rather improperly attacks them alone. Reply at 10-11.
`
`Apple is wrong. Rather, Patent Owner demonstrated that neither Golan or
`
`Togo, either alone or in combination, disclose claim limitation [1.4]. POR at
`
`36-39.
`
`Apple also argues that Patent Owner fails to recognize that the Petition
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`relies on both Golan and Togo to disclose a non-switching criteria. Reply at
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`12. But as set forth in the POR, neither Golan nor Togo disclose non-switch-
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`ing criteria. POR at 37-38. Apple’s reply brief, which provides conclusory
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`statements that provide mere assertions regarding the combination, is insuffi-
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`cient to support its position. Reply at 12.
`
`Further, Togo’s switching criterion is not based on image quality as Ap-
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`ple contends (Pet. at 45) but rather is based on an autofocus means in the im-
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`aging device. POR at 38. Apple attempts to correct this by noting that “image
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`analysis” is not required by claim limitation [1.4]. Reply at 14. But this ignores
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`that it was Apple’s decision to base its obviousness arguments for modifying
`
`Golan with Togo to meet claim limitation [1.4] on this very image analysis:
`
`Togo’s solution is for image control means 4 (a camera control-
`ler) to employ a no-telephoto criterion based on image quality.
`(APPL-1003), ¶113). For example, as shown in annotated FIG.
`7 below, one switching criterion is based on when “the image
`quality of the cutout image 22 of the wide-angle image be-
`comes poorer than the image quality of the telephoto image
`23.” (APPL-1010), [0066]. Togo describes an example image
`quality no-switching criterion to include that “setting magnifi-
`cation X < A” or “setting magnification X ≥ A and the imag-
`ing distance Y ≤B”. (APPL-1010),[0061]-[0062].”
`
`Pet. at 45 (emphasis in original).
`
`Apple then attempts to provide a new explanation that a POSITA would
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`have understood how “Togo’s image-quality-based, non-switching criterion”
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`could have been applied in modifying Golan. Reply at 15. First, Apple should
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`not be allowed in its reply brief to revise its analysis of the combination of
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`U.S. Patent No. 10,230,898
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`Golan and Togo. Such an argument is late and must not be considered. Second,
`
`Apple again improperly attempts to incorporate 2 paragraphs, consisting of
`
`260 additional words, from Dr. Durand’s declaration to support its single sen-
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`tence about a POSITA’s understanding of Togo. This must be ignored as it
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`violates 37 C.F.R. § 42.6(a)(3). Finally, Apple’s misunderstanding of how
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`Togo actually functions demonstrates that a POSITA would not have com-
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`bined Golan and Togo to meet the elements of limitation [1.4] in claim 1 of
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`the ‘898 patent. If Apple and its expert cannot properly understand and apply
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`Togo, there is no evidence that a POSITA would have been more successful.
`
`B. Limitation [1.5]
`
`Apple argues that Martin’s teachings are not limited to an autostereo-
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`scopic display. Reply at 17. This ignores that the entirety of Martin is directed
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`toward an autostereoscopic display. Apple cites to Martin at col. 3:44-49 as
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`allegedly disclosing generic parallax images, while ignoring the conclusion
`
`sentence from that very paragraph of Martin, which states that “[t]hese paral-
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`lax images may serve as a basis for generating an autostereoscopic display
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`consistent with the present invention.” Ex. 1006, 3:52-54. Martin is about au-
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`tostereoscopic display, not achieving a smooth, continuous zoom, and Apple,
`
`despite its best efforts, cannot escape that fact. Therefore, a POSITA would
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`15
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`U.S. Patent No. 10,230,898
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`not have combined Golan, Martin, and Togo to meet the elements of limitation
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`[1.5] in claim 1 of the ‘898 patent.
`
`C. Claim 4
`
`Apple’s arguments regarding claim 4 are similar to those above regard-
`
`ing the non-switching criteria for limitation [1.5]. For the same reasons, Ap-
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`ple’s misunderstanding of Togo demonstrate that a POSITA would not have
`
`combined Golan and to Togo to meet the limitations of claim 4.
`
`IV. GROUND 2 - APPLE FAILS TO DEMONSTRATE THAT
`CLAIM 9 IS UNPATENTABLE OVER GOLAN IN VIEW OF
`MARTIN, TOGO, AND LEVEY
`As an initial matter, a POSITA would not have been motivated to com-
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`bine Golan, Martin, and Togo for the reasons set forth above with respect to
`
`Ground 2. The addition of Levey does not rectify the fact, and nothing in Ap-
`
`ple’s reply argues otherwise. Therefore, a POSITA also would not have been
`
`motivated to Golan, Martin, Togo, and Levey.
`
`Moreover, Apple ignores that every limitation of claim 9 is not found
`
`in its combination of Golan, Martin, Togo, and Levey. Claim 9 recites that
`
`“user inputs include a zoom factor, a camera mode and a region of interest”
`
`and depends upon claim 8, which states that the acquiring “the Wide and Tele
`
`image data [is] based on the user input.” Ex. 1001, 13:6-7. Thus, the “region
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`16
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`of interest” recited in claim 9 is a user input that is used to “acquire Wide and
`
`Tele image data.”
`
`But Martin only identifies the region of interest after the image is cap-
`
`tured. POR at 48. Thus, Martin does not meet this limitation. As its reply brief
`
`does not contest this, Apple appears to have conceded that claim 9 is not met
`
`by the combination of Golan, Martin, Togo, and Levey.
`
`V. GROUND 3 – APPLE FAILS TO DEMONSTRATE THAT
`CLAIMS 11 AND 19 ARE PATENTABLE OVER GOLAN IN
`VIEW OF MARTIN, TOGO, AND BORDER
`Apple again provides a single sentence that Patent Owner is importing
`
`various requirements including “rectification process” and “parallax” into the
`
`claims, and then cites to 4 paragraphs in Dr. Durand’s declaration, consisting
`
`of 398 words. Reply at 21. The argument should not be considered because it
`
`violates 37 C.F.R. § 42.6(a)(3)’s prohibition on incorporation by reference of
`
`arguments from expert declarations into the IPR briefs without substantively
`
`explaining the arguments.
`
`VI. GROUND 4 - APPLE FAILS TO DEMONSTRATE THAT
`CLAIMS 10 AND 20 ARE UNPATENTABLE OVER GOLAN IN
`VIEW OF MARTIN, TOGO AND PARULSKI
`Apple states that Patent Owner’s arguments regarding the “enhance-
`
`ment signal” misrepresent an example of Parulski and improperly applies
`
`17
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`bodily incorporation. Reply at 22. Apple is wrong, as its reply brief ignores
`
`that it selectively quoted from Parulski to demonstrate why a POSITA would
`
`have combined it with Golan, Martin, and Togo. Pet. at 78. The section of
`
`Parulski relied upon by Apple includes the “enhancement signal.” Pet. at 78
`
`(Citing to Ex. 1008, Parulski, 22:14-23:3, which includes a disclosure of the
`
`“enhancement signal” at 22:37-42.). Thus, the “enhancement signal” is part
`
`of Apple’s motivation to combine Parulski with the Golan. But neither Apple
`
`nor its expert provide any explanation as to how this “enhancement signal”
`
`functions or how it would be implemented in Golan. Without understanding
`
`how that “enhancement signal” works in Parulski, a POSITA would not have
`
`been motivated to combine the teachings of Parulski with Golan.
`
`VII. SECONDARY CONSIDERATIONS / OBJECTIVE INDI-
`CIA OF NON-OBVIOUSNESS
`The Reply’s response to Patent Owner’s extensive evidence of second-
`
`ary considerations fails to rebut Patent Owner’s demonstration of non-obvi-
`
`ousness.
`
`First, Petitioner asserts that Patent Owner is not entitled to a presump-
`
`tion of nexus because it first needs to show that the “secondary consideration
`
`is coextensive with the challenged claims.” Reply at 24 (emphasis in the orig-
`
`inal). But Petitioner does not deny it vigorously pursued Patent Owner’s
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`18
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`“smooth transition technology” and “[smooth] zoom technology” and the abil-
`
`ity to license all its intellectual property. POR at 57-62. These technology fea-
`
`tures are specific to the challenged claims.
`
`Second, Petitioner argues that Patent Owner’s use of secondary consid-
`
`erations with respect to multiple patents undermines Patent Owner’s reliance
`
`on the secondary considerations of non-obviousness regarding these patents.
`
`Reply at 27. This ignores that more than one patent in a portfolio may have
`
`value. Under Petitioner’s theory, only one patent could ever be the basis of a
`
`secondary consideration of nonobvious. Further, Apple ignores that it specif-
`
`ically asked Patent Owner for the ability to license all of Corephotonics IP,
`
`and asked for and received samples of Corephotonics’ image fusion algorithm.
`
`See Exs. 2007, 2011, 2012, 2018, 2019, 2020, 2021, 2022; Ex. 2013 Kali
`
`Decl., at ¶¶ 17-30. Thus, the technical features claimed in the ‘898 patent are
`
`specifically what Petitioner requested to evaluate and license.
`
`Petitioner also refers to much of the industry praise as “self-serving,”
`
`dismissing it coming from investors, business partners and Patent Owner’s
`
`press releases. Reply at 29. But this hand waives the fact that other companies
`
`entered a business relationship with Patent Owner because of the patented
`
`technology. Petitioner’s position would require one to ignore the very actions
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`19
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`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
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`of companies who “put their money where their mouth is” regarding the
`
`claimed technology of the ‘898 patent.
`
`VIII. CONCLUSION
`
`For the reasons set forth above, Corephotonics respectfully requests
`
`that the Board affirm the validity of the challenged claims of the ‘898 patent.
`
`Dated: July 23, 2021
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`20
`
`
`
`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
`
`CERTIFICATE OF WORD COUNT
`
`I certify that there are 3,504 words in this paper, excluding the portions
`
`exempted under 37 C.F.R. § 42.24(a)(1), according the word count tool in Mi-
`
`crosoft Word.
`
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`21
`
`
`
`Case No. IPR2020-00861
`U.S. Patent No. 10,230,898
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Sur-Reply,” and accompanying
`
`exhibits was served on July 23, 2021 by email sent to:
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
`Andrew S. Ehmke
`Michael S. Parsons
`Jordan Maucotel
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: andy.ehmke.ipr@haynesboone.com
`Email: michael.parsons.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
`
`
` /Neil A. Rubin/
`
`
`
`
`22
`
`
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