Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: May 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS INC. and LG ELECTRONICS USA, INC.,
`Petitioner,
`v.
`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2023-00104
`Patent 6,959,293 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, BARBARA A. BENOIT, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`BENOIT, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`
`I. INTRODUCTION
`LG Electronics Inc. and LG Electronics USA, Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
`partes review of claim 1 (“the challenged claim”) of U.S. Patent No.
`6,959,293 B2 (Ex. 1001, “the 293 patent”). Image Processing Technologies,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). With prior authorization (Paper 7), Petitioner filed a Preliminary
`Reply (Paper 8, “Reply”), limited to addressing Patent Owner’s arguments
`for discretionary denial under 35 U.S.C. §§ 314(a) and 325(d), and Patent
`Owner filed a Preliminary Sur-reply on these issues (Paper 9, “Sur-reply”).
`After considering the Petition, Preliminary Response, Preliminary
`Reply, and Preliminary Sur-reply, we exercise our discretion under
`35 U.S.C. § 325(d) and do not institute inter partes review for the reasons
`explained below.
`
`A. Real Parties in Interest
`The Petition identifies LG Electronics Inc. and LG Electronics USA,
`Inc. as real parties in interest. Pet. 1. Patent Owner identifies only itself as
`real party in interest. Paper 3 (Patent Owner’s Mandatory Notices), 1.
`
`B. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 1–2; Paper 3, 1–2.
`The parties identify the following district court cases: Image
`Processing Technologies, LLC v. Samsung Electronics Co., No. 2:20-cv-
`00050 (E.D. Tex.), Image Processing Technologies, LLC v. Samsung
`Electronics Co., No. 2:16-cv-00505 (E.D. Tex.), and Image Processing
`
`2
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`Technologies, LLC v. Canon Inc., No. 2:10-cv-03867 (E.D.N.Y.). Pet. 1–2;
`Paper 3, 1–2. Patent Owner additionally indicates that the ’293 patent is
`involved in Image Processing Technologies, LLC v. LG Electronics Inc.,
`No. 2:22-cv-00077 (E.D. Tex.). Paper 3, 1.
`The parties also each indicate that the sole claim challenged here was
`involved in three prior Board proceedings. Pet. 1–2; Paper 3, 1–2. Two
`inter partes proceedings were brought by a different petitioner —Samsung
`Electronics Co. v. Image Processing Technologies, LLC, IPR2017-00336
`(“IPR 336”) and Samsung Electronics Co. v. Image Processing
`Technologies, LLC, IPR2017-01189 (“IPR 1189”). In a final written
`decision issued May 9, 2018 in IPR 336, the Board determined that the
`petitioner had not demonstrated that claim 1 was unpatentable, among other
`determinations. Ex. 1005, 43–54, 76. In a decision denying institution
`issued August 18, 2017 in IPR 1189, the Board determined that the
`petitioner did not demonstrate a reasonable likelihood of succeeding with
`regard to claim 2 (which depends directly from claim 1) or any other
`challenged claim. Ex. 1006, 27. Additionally, the Board reversed the
`Examiner’s rejection that claim 1 was unpatentable in Ex Parte Image
`Processing Technologies, LLC, Reexamination Control No. 90/014,056
`(“Reexam 056”). Ex. 1007, 22;1 Ex. 2001 (reexamination certificate issued
`January 27, 2020 confirming patentability of claim 1).
`
`
`1 All citations to the Board’s Reexamination Decision refer to the page
`number inserted by Petitioner in the bottom, right-hand corner of each page
`of Exhibit 1007.
`
`3
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`
`C. The ’293 Patent
`The ’293 patent describes a visual perception device, including a
`device for processing image signals using histogram calculation units.
`Ex. 1001, 1:6–10. Figure 3 of the ’293 patent illustrates a histogram
`calculation unit, and is reproduced below with highlighting added by
`Petitioner (Pet. 5). Ex. 1001, 4:45–46.
`
`
`As shown in highlighted Figure 3 above, histogram calculation unit 1
`includes analysis memory 100 (in red), address multiplexer 105 (in green),
`data input multiplexer 106, incrementation unit 107, classifier 101 (in blue),
`time coincidences unit 102 (in purple), and test unit 103, which is connected
`to analysis output registers 104. Ex. 1001, 8:37–43, 9:51–54. Output of
`classifier 101 (in blue) is connected to bus 111 (in yellow). Id. at 9:36.
`Analysis output registers 104 receive and store statistical information
`prepared on the basis of the values of parameter A of signal DATA(A) for
`each frame. Id. at 9:51–57. In particular, after processing a complete frame,
`statistical information representative of this frame is produced and stored in
`analysis output registers 104. Id. at 10:1–14. This statistical information
`
`4
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`includes minimum values (MIN) and maximum values (MAX) of the
`histogram, the number of points (NBPTS) of the histogram, the position
`(POSRMAX) of the maximum of the histogram, and the number of points
`(RMAX) at the maximum of the histogram. Id. These features are
`determined in parallel with the formation of the histogram by test unit 103.
`Figure 4 of the ’293 patent illustrates a self-adapting histogram
`calculation unit with anticipation and learning functionalities, and is
`reproduced below with highlighting added by Patent Owner (Prelim.
`Resp. 10). Ex. 1001, 4:47–49.
`
`
`According to the ’293 patent, in the self-adapting embodiment illustrated in
`Figure 4, the content of the memory of classifier 101 (in blue) is updated
`automatically. Ex. 1001, 11:14–29. To implement the self-adapting
`function (i.e., real-time updating of classifier 101), classifier 101 has an
`addressable memory whose writing is controlled by signal END, which is
`generated by sequencer 9. Id. Histogram calculation unit 1 also includes
`selection circuit 110 (e.g., an “OR” gate), receiving as its input signals INIT
`and END and whose output is connected to the selection input of address
`multiplexer 105. Id.
`
`5
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`Figure 31a of the ’293 patent illustrates a polyvalent histogram
`calculation unit that can be programmed to process more than one
`parameter, and is reproduced below (id. at 21:18–36).
`
`
`As shown in Figure 31a above, polyvalent histogram calculation
`unit 1a comprises histogram calculation unit 1, input multiplexer 500,
`associated register 501, and learning multiplexer 503. Id. In this
`embodiment, it is possible to use a single histogram calculation unit to
`process any of parameters Data (A) – Data (E), which are addressed by bus
`510 in relation to SELECT command 502. Id. at 20:58–66. Additionally,
`polyvalent histogram calculation units can be operated in a matrix. Id. at
`21:37–42.
`
`D. Challenged Claim
`Claim 1 is the sole challenged claim and is reproduced:
`1. A visual perception processor for automatically
`detecting an event occurring in a multidimensional space (i, j)
`evolving over time
`with respect to at least one digitized parameter in the form
`of a digital signal on a data bus,
`said digital signal being in the form of a succession aijT of
`binary numbers associated with synchronization signals enabling
`to define a given instant (T) of the multidimensional space and
`
`6
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`the position (i, j) in this space, the visual perception processor
`comprising:
`the data bus;
`a control unit;
`a time coincidences bus carrying at least a time
`coincidence signal; and
`at least two histogram calculation units for the treatment
`of the at least one parameter,
`the histogram calculation units being configured to form a
`histogram representative of the parameter as a function of a
`validation signal and to determine by classification a binary
`classification signal resulting from a comparison of the
`parameter and a selection criterion C,
`wherein the classification signal is sent to the time
`coincidences bus, and wherein the validation signal is produced
`from time coincidences signals from the time coincidence bus so
`that the calculation of the histogram depends on the classification
`signals carried by the time coincidence bus.
`Ex. 1001, 26:34–59.
`
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the sole challenged claim on
`the following grounds:
`Claim Challenged
`1
`1
`
`Reference(s)/Basis
`Pirim2
`Pirim
`
`35 U.S.C. §
`102
`103
`
`
`2 WIPO International Publication No. WO 99/36893, published July 22,
`1999 (Ex. 1018). See Pet. 7 (asserting the reference is prior art under
`pre-AIA 35 U.S.C. § 102(a), § 102(b), § 102(e), and § 119). As Petitioner
`notes, the sole named inventor of the ’293 patent (Patrick Pirim) is one of
`the named inventors on the asserted prior art Pirim. Pet. 7.
`
`7
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`Claim Challenged
`1
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Pirim, Bolle3
`
`Pet. 3.
`In support of its assertions, Petitioner additionally relies on the
`Declaration of Dr. Jeffrey J. Rodriguez (Ex. 1002).
`
`1. Overview of Pirim
`Pirim describes an image processing system to detect drowsiness.
`Ex. 1018, 1 (Abstract), 3 (Field of Invention). Pirim indicates that “[t]he
`present invention discloses an application of the generic image processing
`system disclosed in” two PCT Applications.4 Id. at 12:11–15.5
`Pirim’s system “for detecting a person falling asleep includes a sensor
`for acquiring an image of the face of the person, a controller, and a
`histogram formation unit for forming a histogram on pixels having selected
`characteristics.” Id. at 1 (Abstract); 7:3–5. “The controller controls the
`histogram formation unit to select pixels of the image having characteristics
`corresponding” to an eye of the driver. Id. at 7:5–7. The controller “form[s]
`a histogram of the selected pixels” and “analyzes the histogram over time”
`to identify characteristics of eye opening and closing that are “indicative of
`the driver falling asleep.” Id. at 7:7–10.
`
`
`3 U.S. Patent No. 5,546,475, issued August 13, 1996 (Ex. 1019). See Pet. 17
`(asserting the reference is prior art under pre-AIA 35 U.S.C. § 102(b)).
`4 PCT/FR97/01354 and PCT/EP98/05383 (Ex. 1021, “Pirim 2”).
`5 All references to the page numbers in Pirim are to the page numbers in
`Exhibit 1018 inserted by Petitioner at the bottom, right-hand corner of each
`page—not the original page numbers that appear in the middle of each page.
`
`8
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`Figure 14 below, with highlighting added by Petitioner, illustrates an
`individual histogram formation unit. Id. at 10:22; Pet. 11.
`
`
`As shown in highlighted Figure 14 above, histogram formation
`block 25 has histogram forming portion 25a, which includes memory 100 (in
`red) and classifier 25b (in blue) for selecting the criteria of pixels for which
`the histogram is to be formed. Ex. 1018, 28:17–24; Pet. 11. Classifier 25b
`enables only data having selected classification criteria to be considered
`further. Id. at 29:20–22. The output of classifier 25b proceeds to bus 23 (in
`yellow), which also carries the output of other classifiers in the system. Id.
`at 31:6–9; Pet. 11. These signals proceed to validation unit 31 (in purple),
`which generates a validation signal. Id. at 30:19–22, 31:6–11; Pet. 11.
`
`2. Overview of Bolle
`Bolle describes an image processing system for recognizing objects
`using computerized optical scanning devices. Ex. 1019, 1:6–8 (Field of
`Invention). Bolle indicates that such systems often use histograms to
`perform this recognition. Id. at 1:15–16. Bolle explains that a “common
`
`9
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`histogram method either develops a gray scale histogram or a color
`histogram from a (color) image containing an object,” which then may be
`compared to a histogram of reference images. Id. at 1:16–20.
`
`F. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art at the time of the invention is a
`factual determination that provides a primary guarantee of objectivity in an
`obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324
`(Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).
`Petitioner asserts that a person of ordinary skill in the art would have
`
`had
`
`either (1) a master’s degree in Electrical Engineering or
`Computer Engineering or the equivalent plus at least a year of
`experience in the field of image processing, image recognition,
`machine vision, or a related field or (2) a Bachelor’s Degree in
`Electrical Engineering or Computer Engineering or
`the
`equivalent plus at least three years of experience in the field of
`image processing, image recognition, machine vision, or a
`related field.
`Pet. 20 (citing Ex. 1002 ¶ 24). At this preliminary stage, Patent Owner has
`not addressed the level of ordinary skill in the art. See generally Prelim.
`Resp.
`
`For the purpose of this decision, we adopt Petitioner’s provided
`definition for the level of skill of a person of ordinary skill in the art. We
`view this definition as reasonable and consistent with the prior art, and is
`supported by the testimony of Dr. Rodriguez. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the
`appropriate level of ordinary skill in the art).
`
`10
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`
`G. Claim Construction
`In inter partes reviews, we construe claims using the same claim
`construction standard employed in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our
`reviewing court, the “words of a claim ‘are generally given their ordinary
`and customary meaning,’” as would have been understood by a person of
`ordinary skill in the art in question at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`“In determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). We construe claim
`terms only as relevant to the parties’ contentions and only to the extent
`necessary to resolve the issues in dispute. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Three prior Board proceedings (IPR 336, IPR 1189, and Reexam 056)
`applied the construction of “the [at least two] calculation units being
`configured to form a histogram representative of the parameter” (the
`“common parameter” limitation) as meaning “the histogram calculation
`units being configured to each form a histogram representative of at least
`one common parameter.” Ex. 1005 (IPR 336 Final Written Decision), 12–
`14; see Ex. 1006 (IPR 1189 Decision Denying Institution), 9; Ex. 1007
`(Reexam 056 Decision finding claim 1 patentable), 8.
`Petitioner applies that construction here and indicates that no
`additional claim terms need to be construed. Pet. 20–21. Patent Owner does
`
`11
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`not address claim construction at this preliminary juncture. See generally
`Prelim. Resp. For purposes of this Decision, we adopt the Board’s prior
`construction for the “common parameter limitation.”6
`
`II. ANALYSIS
`As a threshold matter, we consider whether to exercise our discretion
`under 35 U.S.C. § 325(d) to deny institution of an inter partes review. See
`37 C.F.R. § 42.4(a) (The Director delegated her authority to determine
`whether trial should be instituted to the Board.). Section 325(d) of Title 35
`of the United States Code states, in relevant part: “In determining whether
`to institute or order a proceeding under this chapter, chapter 30, or chapter
`31, the Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” We use a two-part framework for
`evaluating arguments under § 325(d):
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`
`
`6 The prior constructions were made under the broadest reasonable
`interpretation. Neither party has contended that the claim construction
`would change under the current claim construction standard. Nor do we see
`any reason in this record to change the Board’s prior well-reasoned claim
`construction in our consideration whether to exercise our discretion under
`§ 325(d).
`
`12
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). “[T]he
`Becton, Dickinson factors provide useful insight into how to apply the
`framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The
`non-exclusive Becton, Dickinson factors are:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`paragraph). Becton, Dickinson factors (a), (b), and (d) relate to the first part
`of the Advanced Bionics framework (whether the same or substantially the
`same art or arguments previously were presented to the Office), and Becton,
`Dickinson factors (c), (e), and (f) relate to the second part of that framework
`(previous Office error). Advanced Bionics, IPR2019-01469, Paper 6 at 9–
`11.
`
`13
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`The parties dispute whether our discretion under 35 U.S.C. § 325(d)
`should be exercised to deny institution. See generally Pet. 22–29; Prelim.
`Resp. 19–27; Reply 1–4; Sur-reply 1–4.
`
`A. Prior Art and Arguments Previously Presented to the Office
`During original examination, the Examiner determined claim 1 was
`patentable over Pirim and Pirim 2. Ex. 1001, code (56) (including WO
`99/368937 and WO 00/0116108 in References Cited). Petitioner
`acknowledges this. Pet. 4.
`In the Final Written Decision of IPR 336, the Board was not
`persuaded by obviousness arguments based on Pirim alone, finding that
`Pirim’s histogram formation units process a single parameter. Ex. 1005, 45–
`48. The Board also was not persuaded by alternative obviousness arguments
`based on the combination of Pirim and Tomitaka.9 Id. at 49. The Board
`determined that, because Tomitaka itself used histogram generation units to
`process different parameters, the combination of Pirim and Tomitaka—
`replacing Pirim’s histogram units with Tomitaka’s histogram units—
`necessarily would not teach or suggest at least two histogram calculation
`units. Id. The Board further determined that the petitioner in IPR 336 did
`not “explain sufficiently why a person of ordinary skill in the art would have
`had a reason ‘to modify Tomitaka such that the two histogram units
`processed the same parameter.’” Id.
`In a Decision denying institution of IPR 1189, the Board again
`considered whether Pirim alone rendered obvious the limitations recited in
`
`7 WIPO International Publication No. WO 99/36893 (Pirim). Ex. 1018.
`8 WIPO International Publication No. WO/2000/011610 corresponds to
`PCT/EP1998/005383 (Pirim 2). Ex. 3003.
`9 U.S. Patent No. 5,546,125.
`
`14
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`claim 1.10 Ex. 1006, 8, 11–16. The Board determined that “[n]othing in
`Pirim suggests a system have two histogram blocks treating the same
`parameter.” Id. at 16. The Board also rejected the argument, based on
`expert testimony, that “it would be obvious that two histogram units could
`process the same parameter.” Id. The Board explained that “obviousness
`concerns whether a skilled artisan not only could have made but would have
`been motivated to make the combinations or modifications of prior art to
`arrive at the claimed invention.” Id. (quoting Belden Inc. v. Berk-Tek LLC,
`805 F.3d, 1064, 1073 (Fed. Cir. 2015)).
`The third time the Board considered whether Pirim rendered obvious
`the limitations recited in claim 1 was in a Decision on appeal that arose from
`a request for ex parte reexamination of the ’293 patent. Ex. 1007, 4. The
`Board, once again, considered whether Pirim alone disclosed every element
`of claim 1 and, once again, determined that Pirim did not disclose the
`“common parameter” limitation. Id. at 5–6, 9.
`The Board also disagreed with the Examiner’s alternative finding that
`claim 1 would have been obvious in light of Siegel’s11 teaching of “parallel
`processors that each process and form a histogram of the same parameter.”
`Id. at 6, 10–17. More specifically, the Board was persuaded of error in the
`Examiner’s determination that it would have been obvious, in view of
`Siegel, to add another histogram formation block to Pirim to process the
`
`
`10 The Board considered the “common parameter” limitation in the context
`of considering the petitioner’s challenge to claim 2 that directly depends
`from claim 1. See Ex. 1001, 26:60–64 (claim 2).
`11 Howard Jay Siegel et al., PASM: A Partitionable SIMD/MIMD System for
`Image Processing and Pattern Recognition, 30 IEEE Trans. on Computers,
`934–45 (1981) (Ex. 2012).
`
`15
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`same parameter (id. at 10–11) or configure two of Pirim’s existing histogram
`formation blocks to treat the same parameter (id. at 11–13).
`The Board also did not agree with the Examiner’s reliance on various
`alternative combinations of Pirim and Hirota.12 Id. at 17–18. As the Board
`noted, “Hirota discloses a copying machine that determines automatically a
`document type, such as color and black-and-white documents, based on
`histograms.” Id. at 18. Subsequent to this Decision, an ex parte
`reexamination certificate issued confirming the patentability of claim 1.
`Ex. 2001.
`
`B. Petition Grounds Based on Pirim Alone
`In the first two grounds asserted here Petitioner yet again relies on
`Pirim—a reference that was of record during original prosecution and that
`the Board has indicated in three prior decisions, after considering whether
`claim 1 would have been obvious over Pirim alone, does not disclose the
`“common parameter” limitation of claim 1. See Pet. 4 (acknowledging
`Pirim and Pirim 2 were of record).
`On these unambiguous facts, we conclude that the first condition of
`the Advanced Bionics framework part 1 is met—Petitioner here in the two
`grounds based on Pirim presents the same prior art that has been previously
`presented to the Office. See Advanced Bionics, IPR2019-01469, Paper 6 at 8
`(indicating that the second part is only reached “if either condition of the
`first part of the framework is satisfied”).
`In addition, Petitioner presents arguments in the two grounds based on
`Pirim using Pirim 2, which is incorporated by reference into Pirim. See Pet.
`12–17 (discussing incorporation of Pirim 2 by Pirim), 3 (listing grounds with
`
`12 U.S. Patent No. 6,118,895, issued Sept. 12, 2000.
`
`16
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`regard to Pirim, not Pirim 2), 29 (same). We agree with Patent Owner that,
`based on the incorporation by reference, “the Office has considered Pirim 2
`every time it previously considered Pirim in the process of confirming the
`validity of claim 1 of the ’293 Patent.” Sur-reply 2 (citing Prelim. Resp. 5–
`6) (citations omitted). This is in addition to the fact that Pirim 2 was before
`the Examiner as a separate reference during original prosecution, as
`Petitioner acknowledges. Pet. 4.
`Having determined that the same art as presented in the two grounds
`based on Pirim alone was presented previously to the Office, we turn to
`part 2 of the Advanced Bionics framework: whether the Office—here, the
`Board in particular—previously erred in its consideration of Pirim because it
`overlooked the “replicating discussion” in Pirim 2 that “expressly discloses
`the ‘common parameter’ requirement” of claim 1, as Petitioner contends.
`Pet. 27 (Ex. 1021, 37)13; see id. at 22, 26. Petitioner relies on page 37,
`lines 7–21 of Pirim 2 that states:
`It will be appreciated that the present invention is subject
`to numerous modifications. In an embodiment in which a color
`camera is used, the system of the inventor preferably includes
`histogram formation units for hue and saturation. This enables
`classification of targets to be made using those characteristics as
`well. In fact, the invention may be modified by adding histogram
`formation units for any possible other measurable characteristics
`of the pixels. Moreover, while the invention has been described
`with respect to tracking a single target, it is foreseen that multiple
`targets may be tracked, each with user-defined classification
`criteria, by replicating the various elements of the invention. For
`example, assuming the system of the invention included
`additional histogram units for hue and saturation, the system
`
`13 Petitioner also cites Pirim’s incorporation statement on page 12 in support
`of its arguments that the Board erred in overlooking the Pirim 2 discussion.
`Pet. 27 (citing Ex. 1018, 12).
`
`17
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`could be programmed, using a common controller attached to
`two histogram formation processors of the type shown in Fig. 11,
`to track a single target by its velocity, and/or color, and/or
`direction, etc. In this manner, the system could continue to track
`a target if, for example, the target stopped and the track based on
`velocity and direction was lost, since the target could still be
`tracked by color.
`Ex. 1021, 37:7–21; see, e.g., Pet. 27 (citing Ex. 1021, 37); Pet. 46 (citing
`Ex. 1021, 37:15–21); Pet. 50 (citing Ex. 1021, 37:12–15).
`The plain language of Pirim 2 describes using two histogram
`formation units, but does not describe using them to process a common
`parameter. Rather, in the paragraph reproduced above, Pirim 2 describes
`using multiple histogram formation units for different parameters—“for hue
`and saturation” and “for any possible other measurable characteristics of the
`pixels.” Pirim 2 here also describes tracking multiple targets, “each with
`user-defined classification criteria, by replicating the various elements of the
`invention.” This, however, describes using different user-defined
`classification criteria for each target and describes replicating unspecified
`“various elements of the invention” to do so. This paragraph also describes
`“a common controller attached to two histogram formation processors” “to
`track a single target” based on different parameters—“velocity, and/or color,
`and/or direction.” None of this description expressly discloses using two
`histogram formation units for a common parameter as required by claim 1.
`Petitioner provides explanations about how portions of this paragraph
`might be understood by one of ordinary skill in the art to describe the
`“common parameter” limitation of claim 1. See Pet. 46–47 (“In essence,
`Pirim discloses . . . But the second histogram processor 22a could still
`generate . . . A mockup of the additional processor is shown . . .”). The need
`for this additional explanation, however, undermines Petitioner’s contention
`
`18
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`that page 37 of Pirim 2 expressly discloses the “common parameter”
`limitation and does not show error that the Board overlooked an express
`disclosure in Pirim 2 based on its incorporation by reference into Pirim.
`In addition, Petitioner’s arguments regarding the additional histogram
`formation units and annotation of Figure 10 of Pirim 2 are substantially
`similar to the arguments and annotations presented by prior challenges based
`on Pirim and considered by the Board. Compare, e.g., Pet. 48 (annotation
`added second histogram processor 22a to Pirim 2, Fig. 10), with Reexam 056
`Dec. 10–11 (discussion of Examiner’s proposal to add second histogram
`formation block 28a to Pirim, Fig. 12). That Petitioner adopts similar
`approaches to argue that Pirim discloses the “common parameter” limitation
`further undermines Petitioner’s contention that the Board erred. Indeed, like
`the past challenges to claim 1 that the Board has considered, Petitioner relies
`on (i) Pirim for all limitations of claim 1, except the “common parameter”
`limitation and (ii) supplements Pirim in some way (here, arguing that
`Pirim 2 has express disclosure that purportedly teaches the “common
`parameter” limitation) to fill the Pirim gap. Petitioner does not point to error
`in prior Board reasoning, rather Petitioner contends that the Board erred by
`overlooking an express disclosure in Pirim 2. Pet. 27. In addition, Petitioner
`has not identified error in the Board’s prior claim construction of the
`“common parameter” limitation, but rather Petitioner adopts and applies it.
`Id. at 30.
`Because we do not agree that Pirim 2 discloses the “common
`parameter” limitation, we do not perceive any Board error material to
`patentability revealed by the incorporation issue of additional material from
`Pirim 2. Petitioner’s contentions regarding Board error in large measure
`amount to an attempt to fill in the gap left by the Board’s thrice-articulated
`
`19
`
`

`

`IPR2023-00104
`Patent 6,959,293 B2
`conclusion that Pirim does not disclose the “common parameter” limitation
`of claim 1 by pointing to disclosure in Pirim 2, a reference previously before
`the Office during original examination.
`We note that Petitioner advances an anticipation ground based on
`Pirim, which is a statutory basis that has not been considered in any of the
`Board’s prior three decisions that considered single-reference obviousness
`based on Pirim. See Pet. 29–56 (Section XII.A arguing that “[c]laim 1 is
`anticipated and/or rendered obvious by Pirim”). Standards for anticipation
`and obviousness are distinct. Compare 35 U.S.C. § 102(a), (b), or (e), with
`35 U.S.C. § 103(a). Advancing a new statutory basis, however, does not
`demonstrate Board error in its prior consideration of Pirim. Moreover,
`including a nominal anticipation argument among multiple other
`obviousness grounds cannot be a workaround to avoid the Board’s exercise
`of its discretion. In any event, as discussed above, we do not agree that
`Pirim, even when considering its incorporation by reference of Pirim 2,
`expressly discloses the “common parameter” limitation of claim 1. Pet. 27
`(citing Ex. 1018, 10; Ex. 1021, 37).
`Nor are we persuaded that Petitioner’s arguments regarding Pirim,
`even when considering its incorpo