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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PERFECT CORP.,
`Petitioner,
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`v.
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`LENNON IMAGE TECHNOLOGIES, LLC,
`Patent Owner.
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`
`
`
`
`
`PTAB Case No. IPR2021-00124
`Patent No. 6,624,843
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`
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`DECLARATION OF ELI SABER, PH.D. IN SUPPORT OF PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,624,843
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`PERFECT CORP. EXH. 1002
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`
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`TABLE OF CONTENTS
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`Page
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`
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`I.
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`INTRODUCTION AND SUMMARY OF TESTIMONY ......................... 1
`A. Qualifications ....................................................................................... 1
`B. Materials reviewed .............................................................................. 5
`C.
`Level of ordinary skill in the art ........................................................ 5
`Identification of Prior Art .................................................................. 7
`D.
`E.
`Summary of opinions .......................................................................... 8
`II. OVERVIEW OF THE TECHNOLOGY .................................................... 8
`A.
`The ’843 patent .................................................................................... 8
`B.
`The ‘843 Priority Date ...................................................................... 11
`C.
`The ’669 Ex Parte Reexamination ................................................... 11
`D.
`Prior IPR Petitions ............................................................................ 11
`E.
`Claim Construction ........................................................................... 12
`III. UNPATENTABILITY OF THE ’843 PATENT CLAIMS ..................... 13
`A.
`Standards for Invalidity .................................................................... 13
`1.
`Anticipation ............................................................................. 13
`2.
`Obviousness ............................................................................. 14
`B. Ground 1: Bechara and Goldberg Render Obvious Claims
`5, 6, 8, 9, 12, 18, 22, 23, 25, 27, 28, 30 ............................................... 16
`1.
`Bechara (WO 97/29441) ......................................................... 16
`2.
`Goldberg (WO 98/10358) ....................................................... 18
`3. Motivation to Combine ........................................................... 22
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`-i-
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`PERFECT CORP. EXH. 1002
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`4.
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`5.
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`4.
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`Independent Claim 1 and Associated Dependent
`Claims ....................................................................................... 26
`Independent Claim 14 and Associated Dependent
`Claims ....................................................................................... 50
`C. Ground 1A: Bechara, Goldberg, and Lin Render Obvious
`Claims 18, 20, 24, 27, and 29. ........................................................... 59
`1.
`Lin (US 6,108,437) ................................................................... 59
`2. Motivation to Combine ........................................................... 60
`3.
`Claim 18: “The method of claim 17, wherein the step
`of determining further comprises comparing
`biometric information of the person with the
`customer image.” ..................................................................... 62
`Claim 20: “The method of claim 14, wherein the step
`of displaying further comprises: detecting a presence
`of a person near a display; determining that the
`person does not correspond of the customer image;
`and informing the person about a subsequent ac[t]ion
`in response to the step of determining.” ............................... 62
`Claim 24: “The apparatus of claim 1, wherein the
`image capture system repeatedly captures images
`until the controller determines that a valid image has
`been obtained for use with a composite image.” .................. 64
`Claim 27: “The method of claim 14, wherein the step
`of capturing the customer image comprises: detecting
`presence of the customer; capturing the customer
`image in response to detecting presence of the
`customer, wherein the step of detecting presence of a
`customer further comprises detecting proximity of a
`customer.” ................................................................................ 65
`Claim 29: “The method of claim 14, wherein the step
`of capturing the customer image comprises repeatedly
`capturing customer images until determining that a
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`5.
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`6.
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`7.
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`-ii-
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`PERFECT CORP. EXH. 1002
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`3.
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`valid image has been obtained for use with a
`composite image.” ................................................................... 66
`D. Ground 1B: Bechara and Nobuyoshi Render Obvious
`Claims 21 and 26................................................................................ 66
`1.
`Nobuyoshi (JPH07282227A) .................................................. 66
`2.
`Claim 21: “The apparatus of claim 1, further
`comprising: a trigger device, coupled to the
`controller, that detects a presence of the customer and
`activates the image capture system in response to
`detecting presence of the customer, wherein the
`trigger device detects the presence of the customer by
`identifying one or more facial features.” .............................. 67
`Claim 26: “The method of claim 14, wherein the step
`of capturing the customer image comprises: detecting
`presence of the customer; capturing the customer
`image in response to detecting presence of the
`customer, wherein the step of detecting presence of
`the customer further comprises identifying one or
`more customer facial features.” ............................................. 69
`E. Ground 2: MasqueArray Renders Obvious Claims 8, 18, 21-
`23, 26-28 .............................................................................................. 70
`1. MasqueArray ........................................................................... 70
`2. MasqueArray is Prior Art ...................................................... 70
`3.
`Independent Claim 1 and Associated Dependent
`Claims ....................................................................................... 72
`Independent Claim 14 and Associated Dependent
`Claims ....................................................................................... 84
`IV. CONCLUSION ............................................................................................ 87
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`4.
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`-iii-
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`PERFECT CORP. EXH. 1002
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`
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`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`
`
`INTRODUCTION AND SUMMARY OF TESTIMONY
`I, Eli Saber, have been retained by Petitioner Perfect Corp.
`1.
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`I.
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`(“Petitioner”) to investigate and opine on certain issues relating to United States
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`Patent No. 6,624,843 (“the ’843 patent”) in Perfect’s Petition for Inter Partes
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`5
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`Review of that patent. The Petition requests that the Patent Trial and Appeal
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`Board (“PTAB” or “Board”) review and cancel claims 5, 6, 8, 9, 12, 18, and 20-30
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`of the ’843 patent.
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`2.
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`I am being compensated for my work on this matter by Petitioner for
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`consulting services including time spent testifying at any hearing that may be held.
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`10
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`I am also reimbursed for reasonable and customary expenses associated with my
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`work in this case. I receive no other forms of compensation related to this case.
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`My compensation does not depend on the outcome of this inter partes review and I
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`have no other financial interest in this inter partes review.
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`3.
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`This declaration is based on the information currently available to me.
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`15
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`To the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`have not yet been taken.
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`A. Qualifications
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`4.
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`I have summarized in this section my educational background, career
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`1
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`PERFECT CORP. EXH. 1002
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`
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`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`history, publications, and other relevant qualifications. My full curriculum vitae is
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`attached as Appendix A to this declaration.
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`5.
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`I received a Ph.D. in Electrical Engineering from the University of
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`Rochester in 1996. My concentration was on Signal/Image/Video Processing,
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`5
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`Pattern Recognition, and Computer Vision. I received a master’s degree in
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`Electrical Engineering from the University of Rochester in 1992, and I received a
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`bachelor’s degree in Electrical and Computer Engineering, summa cum laude,
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`from the State University of New York at Buffalo in 1998.
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`6.
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`I am a professor in the Electrical and Microelectronic Engineering
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`Department and the Chester F. Carlson Center for Imaging Science at the
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`Rochester Institute of Technology (RIT) in Rochester, New York. I also serve as
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`the Director of the Image, Video and Computer Vision Laboratory. I joined RIT’s
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`full-time faculty in 2004. I have 31 years of industry and academic experience, 26
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`of which are in the field of imaging.
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`15
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`7.
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`Before becoming a full-time professor, I worked for Xerox
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`Corporation for 16 years, from 1988 to 2004. During my years at Xerox, I was
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`responsible for delivering color management, image processing innovations,
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`architectures, and algorithms; xerographic sub-systems for a variety of color
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`products; and control systems for toner production facilities. One of several roles I
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`20
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`held at Xerox was Advanced Development Scientist and Manager. In that
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`PERFECT CORP. EXH. 1002
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`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
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`capacity, I established the Advanced Design Laboratory – an
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`Imaging/Xerographics lab – and provided technical and managerial leadership for
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`the Electrical, Imaging and Xerographics Department. In another role, as Product
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`Development Scientist and Manager, I led the research and development of image
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`5
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`quality metrics for various product platforms. I also led the Image Science,
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`Analysis, and Evaluation area, with 12 to 15 direct reports and a budget of
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`approximately $2 million.
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`8.
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`From 1997 until 2004, I was an adjunct faculty member in the
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`Electrical Engineering Department of RIT and in the Electrical and Computer
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`10
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`Engineering Department of the University of Rochester. I was responsible for
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`teaching undergraduate and graduate coursework in signal, image and video
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`processing; pattern recognition; and communications. Additionally, I performed
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`research in multimedia applications, pattern recognition, image understanding and
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`color engineering.
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`15
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`9.
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`Since joining RIT full-time in 2004, I have been responsible for
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`teaching a variety of undergraduate and graduate courses in digital signal
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`processing, digital image processing, digital video processing, engineering
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`analysis, random signal and noise, advanced engineering mathematics, matrix
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`methods, pattern recognition, communications, modern control theory, and linear
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`systems.
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`PERFECT CORP. EXH. 1002
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`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`10. My current research focuses on image and video processing for
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`multimedia, military and biomedical applications, computer vision and three-
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`dimensional scene reconstruction, and color image processing for printing and
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`multimedia applications. As a principal investigator or co-principal investigator, I
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`5
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`have acquired research funding in excess of $5 million since joining RIT and have
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`managed multiple government grants from the Department of Defense as well as
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`several yearly corporate grants from Hewlett-Packard. In 2012, I was awarded the
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`Prestigious Trustees Scholarship, the highest award at RIT with regard to research
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`recognition.
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`11.
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`I am a senior member of the Institute of Electrical and Electronic
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`Engineers and a member of the IEEE Signal Processing Society, the Electrical
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`Engineering Honor Society, and Eta Kappa Nu.
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`12.
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`I am the author or co-author of over 35 peer-reviewed journal
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`publications.
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`13.
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`I have also authored or co-authored 98 conference and workshop
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`publications and a book entitled Advanced Linear Algebra for Engineers with
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`MATLAB, published by CRC Press in February 2009, and am a named inventor on
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`multiple U.S. and foreign patents.
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`14. A copy of my curriculum vitae is attached as Appendix A to this
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`declaration.
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`PERFECT CORP. EXH. 1002
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`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
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`B. Materials reviewed
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`15. My opinions expressed in this declaration are based on documents and
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`materials identified in this declaration, including the ’843 patent, the prior art
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`references and background materials discussed in this declaration, and the other
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`5
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`references specifically identified in this declaration. I have considered these
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`materials in their entirety, even if only portions are discussed here.
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`16.
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`I have also relied on my own experience and expertise in image/video
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`capture and processing.
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`C. Level of ordinary skill in the art
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`17.
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`I am not an attorney and offer no legal opinions. I have been
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`informed about certain aspects of the law for purposes of my analyses and
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`opinions.1
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`18.
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`I understand that in analyzing questions of invalidity and
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`infringement, the perspective of a person having ordinary skill in the art (“POSA”)
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`is often implicated, and the Court may need assistance in determining that level of
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`skill.
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`1 I understand that the patent laws were amended by the America Invents Act (AIA), but that the earlier
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`statutory requirements still apply to pre-AIA patents. I have been informed that the ’843 patent is a pre-AIA patent,
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`so the pre-AIA requirements control. Unless otherwise stated, my understanding of the law about patent invalidity
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`as set forth in this declaration relates to the pre-AIA requirements.
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`PERFECT CORP. EXH. 1002
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`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`I understand that the claims and written description of a patent must
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`19.
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`be understood from the perspective of a POSA. I have been informed that the
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`following factors may affect the level of skill of a POSA: (1) the educational level
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`of the inventor; (2) the type of problems encountered in the art; (3) the prior-art
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`5
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`solutions to those problems; (4) the rapidity with which innovations are made; (5)
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`the sophistication of the technology; and (6) the educational level of active workers
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`in the field. A person of ordinary skill in the art is also a person of ordinary
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`creativity in the art.
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`20. Based on my experience in video processing, data compression, and
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`computer vision, as well as my reading of the ’843 patent, it is my opinion that a
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`person of ordinary skill with respect to the subject matter of the ’843 patent at the
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`time of the alleged invention would have a bachelor’s degree in electrical
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`engineering, computer engineering, computer science, or a similar field and one
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`year of experience developing software. This level of skill is somewhat flexible.
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`15
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`A person with less education but more relevant practical experience could also
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`meet this standard, for example.
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`21.
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`I am a person of at least ordinary skill in the art and was so on the date
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`to which the ’843 patent claims priority (December 10, 1999) as well as in March
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`of 1998 when the inventor claims to have conceived of the invention. As shown
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`by my qualifications and my curriculum vitae attached as Appendix A, I am aware
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`PERFECT CORP. EXH. 1002
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`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`of the knowledge and skill possessed by a person of ordinary skill in the art at the
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`time of the alleged invention claimed by the ’843 patent. In performing my
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`analysis, I have applied the standard set forth above.
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`D.
`22.
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`Identification of Prior Art
`I am informed that Int’l Pub. No. WO 97/29441 (“Bechara” (Ex.
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`5
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`1003)), which published on August 14, 1997 from a PCT Application filed on
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`February 5, 1997 is prior art under pre-AIA 35 U.S.C. § 102(b).
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`23.
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`I am informed that Int’l Pub. No. WO 98/10358 (“Goldberg” (Ex.
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`1004)), which published on March 12, 1998 from a PCT Application filed on
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`10
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`September 3, 1997 is prior art under pre-AIA 35 U.S.C. § 102(b).
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`24.
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`I am informed that U.S. Patent No. 6,108,437 (“Lin” (Ex. 1005)),
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`which was filed on February 20, 1998 and issued Aug. 22, 2000. Lin claims
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`priority to Prov. Appl. No. 60/066,282, filed Nov. 14, 1997. I am further informed
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`that Lin is therefore prior art under pre-AIA 35 U.S.C. § 102(a) and (e).
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`15
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`25.
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`I am informed that Japanese Patent Publication No. JPH07282227A
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`(“Nobuyoshi,” (Ex. 1006)), which published on Oct. 27, 1995, is prior art under
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`pre-AIA 35 U.S.C. § 102(b).
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`26.
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`I am informed that Chujit Jeamsinkul, MasqueArray: Automatic
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`Makeup Selector/Applicator (“MasqueArray,” (Ex. 1007)), a Master’s thesis
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`20
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`submitted November 11, 1998 and made publicly available no later than March 12,
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`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`1999 (Ex. 1008 (Trauernicht declaration)) and is therefore prior art under pre-AIA
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`35 U.S.C. § 102(a).
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`E.
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`Summary of opinions
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`27. Ground 1: It is my opinion that challenged claims 5, 6, 8, 9, 12, 18,
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`5
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`22, 23, 25, 27, 28, and 30 of the ’843 patent are invalid as obvious based on
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`Bechara in view of Goldberg.
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`28. Ground 1A: It is my opinion that challenged claims 18, 20, 24, 27,
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`and 29 of the ’843 patent are invalid as obvious based on Bechara in view of
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`Goldberg and Lin.
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`10
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`29. Ground 1B: It is my opinion that challenged claims 21 and 26 of the
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`’843 patent are invalid as obvious based on Bechara in view of Goldberg and
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`Nobuyoshi.
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`30. Ground 2: It is my opinion that challenged claims 8, 18, 20-23, and
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`26-28 of the ’843 patent are invalid as obvious based on MasqueArray.
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`II. OVERVIEW OF THE TECHNOLOGY
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`A. The ’843 patent
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`31. The ’843 patent describes an alleged “invention [that] allows apparel
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`retailers and other purveyors of such items an opportunity to virtually ‘dress’ the
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`potential customer in featured merchandise as a virtual ‘fitting.’” ’843 patent at
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`20
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`2:12-15 (start of Summary of the Invention section).
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`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`32. The ’843 patent describes the alleged invention in terms of a three-
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`step process.
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`First, the system captures and stores reference images (i.e., images of apparel). Id.
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`5
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`at 4:12-19. Next, the system captures images of the user(s)/customer(s). Id. at
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`4:19-24. Optionally, motion detection or pattern recognition techniques can be
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`used to automatically capture the customer images. Id. at 6:21-25. Finally, “at
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`step 206, a composite image comprising any one of the reference images and any
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`one of the customer images is generated and displayed.” Id. at 4:24-26. The ’843
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`patent describes the use of facial recognition as an option to identify the customer
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`in an image display area and then to trigger the display of a composite image for
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`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`that customer to review. Id. at 7:45-8:11. Alternatively, a data entry device such as
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`a keypad, touch screen, or voice recognition interface can be used by the customer
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`to identify themselves in order to trigger display of their composite image. Id. at
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`8:12-28.
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`5
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`33. The ’843 patent describes many of the components of the invention as
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`being well known. For example, the patent states that creating composite images
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`was “well known in the art” and could be accomplished with software such as
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`“Adobe’s After Effects Producer bundle program.” ’843 patent at 8:48-54. The
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`patent describes functionality available at the time on the Land’s End website that
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`10
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`allowed a customer to create a virtual model that matches their own physique and
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`then use it to select various clothing styles for display. Id. at 1:30-48. The ’843
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`patent also discusses a prior art patent that describes creating composite images
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`that combined clothing items with captured images of a customer. Id. at 1:49-65.
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`34. The ’843 patent also acknowledges that motion detection and pattern
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`15
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`recognition were “known techniques” that could be used to detect the presence of a
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`customer. ’843 patent at 6:21-25. Similarly, the patent also admits that
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`commercially available facial recognition software (e.g., Virage Videologger with
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`Image Recognition) was capable of comparing an image of a customer to a
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`previously captured image of the customer. Id. at 7:60-8:3.
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`35.
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`I understand that the ’843 patent has been assigned to Lennon Image
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`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`
`Technologies, LLC.
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`B.
`
`The ‘843 Priority Date
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`36. The ’843 patent claims priority to a provisional application that was
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`filed on Dec. 10, 1999.
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`5
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`37. However, I am aware that during the reexamination, Jerry Lennon, the
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`inventor of the ’843 patent filed a declaration claiming he conceived of the
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`invention of the ’843 patent by at least March of 1998.
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`C. The ’669 Ex Parte Reexamination
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`38. A request for ex parte reexamination of the ’843 patent was filed on
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`10
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`September 15, 2012. The request was limited to original claims 1-7, 14-17, and
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`19. The reexamination request was granted on October 25, 2012.
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`39. Numerous office actions, responses, rejections, the reopening of
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`prosecution, telephonic interviews, and eventually an appeal were all part of the
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`six-year reexamination proceedings. Pertinent aspects of the proceedings are
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`15
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`described below. The result of the reexamination was the cancellation of several
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`original claims (1-4, 6, 7, 14-17, and 19), confirmation of the patentability of
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`original claim 5, and the addition of ten new claims (claims 21-30).
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`D.
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`Prior IPR Petitions
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`40. Two prior IPR petitions have been filed challenging the ’843 patent.
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`20
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`In both instances, the Board instituted review but the cases were quickly
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`11
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`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
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`terminated via settlement following institution.
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`41.
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`In IPR2013-00432, Petitioner Lumondi Inc. d/b/a Luminox Watch
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`Company challenged claims 1-7 and 14-19 based on U.S. Patent No. 4,731,743
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`(“Blancato”) and U.S. Patent No. 4,539,585 (“Spackova”). The Board instituted
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`5
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`review of claims 1-7, 14, 15, and 17-19. IPR2013-00432, Paper 9. The Board
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`subsequently granted a joint motion to terminate the proceeding. IPR2013-00432,
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`Paper 19.
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`42.
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`In IPR2014-00593, Petitioner Luxottica Retail North Am., Inc.
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`challenged claims 1-7, 9, 12, 14, 15, and 17-19 based on the same prior art. The
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`10
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`Board instituted review of claims 1, 3, 4, 6, 9, 12, 14, 15, and 17. IPR2014-00593,
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`Paper 11. The Board subsequently granted a joint motion to terminate the
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`proceeding. IPR2014-00593, Paper 21.
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`43. Neither prior IPR petition addressed any of the claims Patent Owner
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`added during reexamination of the ’843 patent, i.e., claims 21-30.
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`15
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`E. Claim Construction
`
`44.
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`In an IPR proceeding, the challenged claims are construed “in
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`accordance with the ordinary and customary meaning of such claim as understood
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`by one of ordinary skill in the art and the prosecution history pertaining to the
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`patent.” 37 C.F.R. § 42.100(b).
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`20
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`45. Three terms were construed in the previous IPR proceedings.
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`12
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`PERFECT CORP. EXH. 1002
`
`
`
`46.
`Term
`“apparel style
`image”
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`I do not believe any of these terms needs to be construed.
`Prior Adopted Construction
`Where Construed
`an image of a style of clothing,
`IPR2013-00432,
`accessories, or any other items for
`IPR2014-00593
`which customer purchase decisions
`are typically based, in part, upon
`how the item appears when used by
`the customer.
`a device that informs the controller
`of the presence of a customer
`automatically or based on customer
`input and, in response, causes the
`composite image to be displayed
`
`IPR2013-00432,
`IPR2014-00593
`
`“trigger device …
`that detects the
`presence of the
`customer and, in
`response, causes
`the composite
`image to be
`displayed” (claim
`6)
`“database”
`
`a collection of pieces of information
`that is organized and used on a
`computer
`47. Nonetheless, my opinions apply equally if the Board were to apply
`
`IPR2014-00593
`
`these constructions from the prior IPRs.
`
`III. UNPATENTABILITY OF THE ’843 PATENT CLAIMS
`
`5
`
`A.
`
`Standards for Invalidity
`
`Anticipation
`1.
`I understand that in order for a patent claim to be valid, the claimed
`
`48.
`
`invention must be novel. I understand that if each and every element of a claim is
`
`disclosed in a single prior art reference, then the claimed invention is anticipated,
`
`10
`
`and the invention is not patentable according to pre-AIA 35 U.S.C. § 102. In order
`
`for the invention to be anticipated, all of the elements and limitations of the claim
`
`13
`
`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`must be shown in a single prior art reference, arranged as in the claim. A claim is
`
`anticipated only if each and every element as set forth in the claim is found, either
`
`expressly or inherently described, in a single prior art reference. In order for a
`
`reference to inherently disclose a limitation, that claim limitation must necessarily
`
`5
`
`be present in the reference.
`
`2. Obviousness
`I understand that obviousness under pre-AIA 35 U.S.C. § 103 is
`
`49.
`
`another basis for invalidity. I understand that where a prior art reference does not
`
`disclose all of the limitations of a given patent claim, that patent claim is invalid if
`
`10
`
`the differences between the claimed subject matter and the prior art reference are
`
`such that the claimed subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art.
`
`Obviousness can be based on a single prior art reference or a combination of
`
`references that either expressly or inherently disclose all limitations of the claimed
`
`15
`
`invention.
`
`50.
`
`I understand that in assessing the obviousness of claimed subject
`
`matter, one should evaluate obviousness in light of the prior art from the
`
`perspective of a person having ordinary skill in the art at the time the alleged
`
`invention was made (and not from the perspective of either a layman or a genius in
`
`20
`
`that art). It is my further understanding that the question of obviousness is to be
`
`14
`
`PERFECT CORP. EXH. 1002
`
`
`
`5
`
`10
`
`15
`
`20
`
`25
`
`30
`
`determined based on:
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`
`• The scope and content of the prior art;
`
`• The difference or differences between the subject matter of the claim
`and the prior art (whereby in assessing the possibility of obviousness
`one should consider the manner in which a patentee and/or a Court
`has construed the scope of a claim);
`
`• The level of ordinary skill in the art at the time of the alleged
`invention of the subject matter of the claim; and
`
`• Any relevant objective factors (the “secondary indicia”) indicating
`nonobviousness, including evidence of any of the following:
`commercial success of the products or methods covered by the patent
`claims; a long-felt need for the alleged invention; failed attempts by
`others to make the alleged invention; copying of the alleged invention
`by others in the field; unexpected results achieved by the alleged
`invention; praise of the alleged invention by the alleged infringer or
`others in the field; the taking of licenses under the patent by others
`and the nature of those licenses; expressions of surprise by experts
`and those skilled in the art at the subject matter of the claim; and
`whether the patentee proceeded contrary to accepted wisdom of the
`prior art.
`
`• Any relevant objective factors (the “secondary indicia”) indicating
`obviousness: independent invention of the claimed invention by
`others before or at about the same time as the named inventor thought
`of it; and other evidence tending to show obviousness.
`
`I understand that for objective evidence of secondary indicia to be
`
`51.
`
`accorded substantial weight, its proponent must establish a nexus between the
`
`evidence and the merits of the claimed invention. I also understand that, where the
`
`offered secondary indicia actually results from something other than what is both
`
`claimed and novel in the patent claim, there is no nexus to the merits of the
`
`15
`
`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`
`claimed invention.
`
`52.
`
`I am not currently aware of any evidence regarding secondary indicia
`
`of non-obviousness related to the claims of the ’843 patent. Should Patent Owner
`
`attempt to present any alleged evidence of secondary indicia of nonobviousness,
`
`5
`
`however, I reserve the right to opine on any such alleged evidence.
`
`53.
`
`I understand that a need or problem known in the field at the time of
`
`an alleged invention can provide an obvious reason to combine elements in the
`
`manner claimed. A patent’s subject matter would have been obvious if at the time
`
`of the invention, there was a known problem for which the patent claims
`
`10
`
`encompassed an obvious solution. Further, if a patent claims a structure known in
`
`the prior art that only substitutes one element for another that is known in the field,
`
`I understand that the combination would have been obvious unless the result is
`
`unexpected and fruitful. Therefore, a predictable variation of prior art is obvious.
`
`15
`
`B. Ground 1: Bechara and Goldberg Render Obvious Claims 5, 6, 8,
`9, 12, 18, 22, 23, 25, 27, 28, 30
`Bechara (WO 97/29441)
`1.
`54. Bechara describes a “virtual optical shop” system that captures an
`
`image of a customer and uses that image to generate composite images that allow
`
`the customer to “virtually” try on eyeglasses and/or color contact lenses. Bechara
`
`20
`
`at Abstract.
`
`55. The system includes an imaging apparatus 1 (e.g., video camera) and
`
`16
`
`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`computer unit 2 with various memories for storing data and images. Id. at 9:11-
`
`10:19. A display apparatus 13 (e.g., computer screen) shows the composite images
`
`of the customer wearing selected eyewear products. Id. at 10:20-24. Figure 2 of
`
`the patent (shown below) depicts an arrangement of these components.
`
`5
`
`
`
`56. As shown, the setup can include an assembling machine 16 for
`
`assembling and providing immediate delivery of selected glasses with prescription
`
`lenses. Id. at 15:4-11.
`
`57. The customer sits in a chair and his or her face is shown in real time
`
`10
`
`on the computer screen so that the system can capture the image of the customer’s
`
`face. Id. at 12:9-19. The chair can be positioned for “correct dimensional
`
`correspondence between the image of the face of the person and the image of the
`
`spectacles frames and the color contact lenses from the image memory.” Id. at
`
`12:9-14.
`
`17
`
`PERFECT CORP. EXH. 1002
`
`
`
`Declaration of Eli Saber, Ph.D.
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,624,843
`58. After the customer’s image is captured, the customer reviews different
`
`options and selects eyewear products to virtually try on. Id. at 12:31-32. “Each
`
`time the customer chooses a product from the showcase, i
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