Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 1 of 9 PageID #: 13732
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`IMAGE PROCESSING
`TECHNOLOGIES, LLC,
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` Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
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` Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`MEMORANDUM ORDER
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`Case No. 2:20-cv-00050-JRG-RSP
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`Before the Court is Defendants Samsung Electronics Co., Ltd.’s and Samsung Electronics
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`America, Inc.’s (“Samsung”) Brief Regarding the Basis for Prosecution History Estoppel (“PHE
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`Brief”). Dkt. No. 175. The Court ordered the PHE Brief previously for detail on the basis for the
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`estoppel that Samsung argued during the pretrial conference. Dkt. No. 170. The PHE Brief arises
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`from issues first presented in Samsung’s Motion to Establish Pre-Trial Procedure for Resolving
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`Legal Issues Involving Doctrine of Equivalents, Including Prosecution History Estoppel (Dkt.
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`No. 135). Previously, the Court reserved the question of waiver. Dkt. No. 170.
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`Plaintiff Image Processing Technologies, LLC’s (“IPT”) doctrine of equivalents (“DOE”)
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`argument and Samsung’s prosecution history estoppel (“PHE”) argument are resolved on the
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`merits without deciding waiver. The Court finds that on the merits PHE bars neither of the two
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`arguments of asserted equivalents. Samsung may, of course, argue that the asserted equivalents
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`are not equivalents, but IPT is not barred from making the argument that they are equivalents.
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`1 / 9
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`Petitioner LG Ex-1010, 0001
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 2 of 9 PageID #: 13733
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`I.
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`BACKGROUND
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`During prosecution, Claim 1 of U.S. Patent No. 6,959,293 (the “’293 Patent”) was
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`amended to overcome the patent examiner’s 35 U.S.C. § 102(b) rejection in view of U.S. Patent
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`No. 5,359,533 (“Ric Ka”). Dkt. No. 175-3 at 19-20, 28. The Applicant also argued that “Ric Ka
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`fails to teach or suggest the limitations as presently recited in claims 1 and 2. For example, Ric
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`Ka fails to teach or suggest two or more histogram calculation units . . . .” Id. at 37-38.
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`Samsung filed a Motion to Establish Pre-Trial Procedure for Resolving Legal Issues
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`Involving Doctrine of Equivalents, Including Prosecution History Estoppel. Dkt. No. 135.
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`Samsung also filed an Unopposed Motion for Expedited Briefing on Samsung’s Motion to
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`Establish Pre-Trial Procedure for Determination of Prosecution History Estoppel Issues. Dkt. No.
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`134. The Court granted the expedited briefing, which waived the reply and sur-reply. Dkt. No.
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`136.
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`IPT made express DOE arguments in Dr. Bovik’s claim charts and reports. See generally
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`Dkt. No. 175-9, 175-10, 175-11. During oral argument to the Court Samsung asserted that “it
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`was not and still is not clear to what extent, if at all, Plaintiffs intend to rely on the Doctrine of
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`Equivalents.” It represented that the issue it sought to address was the effect of the patent
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`applicant’s distinguishing Claim 1’s “requirement to have two histogram calculation units from
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`previous art that relied on a single processer.” Dkt. No. 184-3 at 3-4.
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`Samsung’s PHE Brief addresses two PHE arguments that it anticipates from IPT. Dkt.
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`No. 175 at 4. First, “that “a computer processor configured to execute” is the equivalent of the
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`required “hardware” elements, especially the two or more specialized Histogram Calculation
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`Units (HCUs)” (“PHE-1”). Id. Second, that “hardware transmitting image frame data, whereby
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`each frame is associated with a time T, and each frame includes pixel data for the frame, with
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`2 / 9
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`Petitioner LG Ex-1010, 0002
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 3 of 9 PageID #: 13734
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`each pixel corresponding to a position (x,y) or (i,j)” is the equivalent of the element “said digital
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`signal . . . in this space”” (“PHE-2”). Id. Samsung’s PHE Brief asserts both argument-based and
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`amendment-based PHE.
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`II.
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`LEGAL STANDARD
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`a. Prosecution History Estoppel
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`PHE, when applied to a DOE argument regarding an element, “bar[s] the application of
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`the doctrine of equivalents to that element.” Warner-Jenkinson Co., Inc. v. Hilton Davis
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`Chemical Co., 520 U.S. 17, 33 (1997). As applied, PHE “places reasonable limits on the doctrine
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`of equivalents . . . .” Id. at 34. PHE does so by “prevent[ing] a patentee from using the doctrine
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`of equivalents to recapture subject matter surrendered from the literal scope of a claim during
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`prosecution.” Trading Technologies Intern., Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1322 (Fed.
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`Cir. 2013).
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`The application of PHE is a matter of law. Festo Corp. v. Shoketsu Kinzoku Kogyo
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`Kabushiki Co., Ltd., 344 F.3d 1359, 1367-68 (Fed. Cir. 2003). PHE comes in two forms: (1)
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`amendment-based estoppel and (2) argument-based estoppel. Conoco, Inc. v. Energy &
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`Environmental Intern., L.C., 460 F.3d 1349, 1363-64 (Fed. Cir. 2006).
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`b. Amendment-Based Estoppel
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`Once the alleged infringer shows that a claim was amended, there is a presumption that
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`the amendment is “a general disclaimer of the territory between the original claim and the
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`amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740
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`(2002). The patent owner then bears “the burden of showing that the amendment does not
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`surrender the particular equivalent in question.” Festo Corp. v. Shoketsu Kinzoku Kogyo
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`Kabushiki Co., 535 U.S. 722, 740 (2002).
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`3 / 9
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`Petitioner LG Ex-1010, 0003
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 4 of 9 PageID #: 13735
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`To meet this burden, “[t]he patentee must show that at the time of the amendment one
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`skilled in the art could not reasonably be expected to have drafted a claim that would have
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`literally encompassed the alleged equivalent.” Festo Corp. enumerated three ways a patentee
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`may overcome the presumption: (1) “[t]he equivalent may have been unforeseeable at the time of
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`the application;” (2) “the rationale underlying the amendment may bear no more than a
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`tangential relation to the equivalent in question;” and (3) “or there may be some other reason
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`suggesting that the patentee could not reasonably be expected to have described the insubstantial
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`substitute in question.” Id. at 740-741.
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`c. Argument-Based Estoppel
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`Arguments made during the prosecution of a patent application are given the same weight
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`as claim amendments. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999).
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`Argument-based history estoppel applies when there is a “clear and unmistakable surrender of
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`subject matter” in the prosecution history. Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352,
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`1363 (Fed. Cir. 2003), quoting Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1458 (Fed.
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`Cir. 1998).
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`III. ANALYSIS
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`a. Amendment-Based Estoppel
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`Once the alleged infringer shows that a claim was amended, there is a presumption that
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`the amendment is “a general disclaimer of the territory between the original claim and the
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`amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740
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`(2002). Samsung requests the Court to find that IPT is barred by PHE from asserting (1) PHE-1
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`and (2) PHE-2. Dkt. No. 175 at 4.
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`4 / 9
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`Petitioner LG Ex-1010, 0004
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 5 of 9 PagelD # : 13736
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`The Court finds that, in both cases, PHE does not apply. While there is a presumption
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`that the amendment is a general disclaimer of the te1Tito1y between the original claim and the
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`amended claim under Festo, these limitations do not implicate te1Tito1y between the original
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`claim and the amended claim. There is no presumption to rebut. Below is a comparison of the
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`original Claim 1 and amended Claim 1.
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`Ori2inal Claim 1
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`Amended Claim 1
`(new material underlined, deleted material in sbikethrough)
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`1. (CmTently Amended) A visual perception processor for
`1. A visual perception
`automatically detecting an event occmTing in a
`processor, comprising: a data
`bus; a time coincidences bus; multidimensional s12ace (i,j) evolving over time with res12ect
`and two or more histogram
`to at least one digitized 12arameter in the fo1m of a digital
`calculation units that receive
`signal on a data bus 2 said digital si@al being in the fo1m of a
`the data DAT A(A),
`succession aiiT ofbinai:y numbers associated with
`DATA(B), ... DATA(E) via
`SJ'.!!Chronization si@als enabling to define a given instant (T)
`of the multidimensional s12ace and the 12osition (i,j) in this
`the data bus and supply
`classification infonnation to
`s12ace, the visual 12erce12tion 12rocessor comprising:
`the single time coincidences
`[[ a]] the data. bus;
`bus.
`a control unit
`a time coincidences bus can:ying at least a time
`coincidence si@ al: and
`at least two ai- mai-e histogram calculation units for the
`b'eabnent of the at least one 12arameter2 th~ nieei:1,re the e~a
`QA+A&<\:j, QA+A83j, ... QA+AE£j >rta flte eeta lnts a11e
`SMJ>fllj' ela:ssi:iieafi:011 i:ftfaftBati:011 fa fee si:11gle ftme
`eei:fteieeaees a:as
`the histogram calculation units being configured to
`fo1m a histogram re12resentative of the 12arameter as a function
`of a validation si@ al and to dete1mine by classification a
`binai:y classification signal resulting from a com12arison of the
`12arameter and a selection criterion C, wherein the
`classification si@ al is sent to the time coincidences bus, and
`wherein the validation si@al is 12roduced from time
`coincidences signals from the time coincidence bus so that the
`calculation of the histogram de12ends on the classification
`signals caiTied by the time coincidence bus.
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`Dkt. No. 175 at 5. Regarding PHE-1 , the presence of the sb11ctural elements are the only
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`pai1s of Claim 1 that were not amended. The amendment does implicate te1Tito1y between the
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`5 / 9
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`Petitioner LG Ex-1010, 0005
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 6 of 9 PageID #: 13737
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`original claim and the amended claim, but that territory regards functionality and configuration.
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`For example, “a time coincidences bus not carrying at least a time coincidence signal” is
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`presumed disclaimed by the addition of the functional limitation “carrying at least a time
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`coincidence signal,” but “a time coincidences bus” otherwise is not presumed disclaimed as it is
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`not part of the territory between the original claim and the amended claim. The data bus is in
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`both the original claim and the amended claim. The time coincidences bus is in both the original
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`claim and the amended claim. The at least two histogram calculation units are in both the
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`original claim and the amended claim, although the syntax has changed from “two or more” to
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`“at least two.”
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`None of the structural elements were removed. The only new structural element
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`introduced by amendment is the control unit. While this may create the presumption of a
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`disclaimer of the absence of a control unit, there is no territory between the original claim and
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`amended claim that indicates a disclaimer of the argument that “a computer processor configured
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`to execute” is the equivalent of the required “hardware” elements, especially the two or more,
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`specialized HCUs.
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`b. Argument-Based Estoppel
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`Argument-based history estoppel applies when there is a “clear and unmistakable
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`surrender of subject matter” in the prosecution history. Cordis Corp. v. Medtronic AVE, Inc., 339
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`F.3d 1352, 1363 (Fed. Cir. 2003), quoting Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449,
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`1458 (Fed. Cir. 1998). Samsung’s PHE Brief raises two instances where it asserts argument-
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`based estoppel applies: (1) IPT’s distinction in IPR No. 2017-00336 of Claim 1 from the
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`reference Robert B. Rogers, "Real-Time Video Filtering With Bit-Slice Microprogrammable
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`Processors," Ph.D. Dissertation, New Mexico State University (1978) (“Rogers”) for allegedly
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`6 / 9
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`Petitioner LG Ex-1010, 0006
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 7 of 9 PageID #: 13738
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`not including two HCUs with specialized hardware, and (2) IPT’s arguments in an ex parte
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`reexamination where Samsung asserts that IPT asserted that Claim 1 required hardware
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`consisting of two or more specialized HCUs that interacted with each other in specific ways via
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`specific signals and busses. Dkt. No. 175 at 13.
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`Regarding the Rogers reference, IPT argued:
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`Rogers does not disclose "the histogram calculation units being
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`configured to form a histogram representative of the parameter."
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`The Petitioner does not rely on Gilbert for this element. See
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`Petition at 56.
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`Petitioner relies on Rogers' disclosure of "three histograms of pixel
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`intensity [] formed for each of two tracking windows" (Petition at
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`56), but the Petition's argument is overly generic and fails to make
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`the required showing. The Petition fails to identify at least two
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`histogram calculation units, as required by the claim. Such units
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`have various requirements, including the coincidence of time
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`before a histogram is updated. The only pixel intensity histograms
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`cited by Petitioner are independent of one another, and are not
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`linked by a time coincidence, as an example. Tellingly, Petitioner
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`does not address how the histogram units operate or how
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`histograms are calculated in any detail, such that the Petition fails
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`to even mention time coincidences signals, the time coincidences
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`bus, or how a binary classification signal is determined. See
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`Petition at 57. Therefore, based on this lack of explanation,
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`7 / 9
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`Petitioner LG Ex-1010, 0007
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 8 of 9 PageID #: 13739
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`Petitioner does not cite any teaching of Rogers suggesting at least
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`two histogram calculation units. See Petition at 53- 58.
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`Dkt. No. 175-6 at 30-31. This argument indicates the necessity of at least two histogram
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`calculation units, structures that are in both original Claim 1 and amended Claim 1, and
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`functionality of the histogram units with respect to time coincidences signals, the time
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`coincidence bus, and determination of a binary classification signal. This argument does not,
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`however, indicate with clear and unmistakable surrender of subject matter that the histogram
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`calculation units must be hardware.
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`Regarding the ex parte reexamination, IPT argued that “to form a histogram
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`representative of the parameter as a function of a validation signal:”
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`requires that each histogram calculation unit (HCU) forms a
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`histogram representative of the parameter as a function of a
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`validation signal. Thus, in accordance with [the limitation], the
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`figure below illustrates a first HCU (HCU1) forming a first
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`histogram (H1) representative of the parameter (e.g., DATA(A)) as
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`a function of a first validation signal (V1). Likewise, the figure
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`also illustrates a second HCU (HCU2) forming a second histogram
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`(H2) representative of the parameter (e.g., DATA(A))) as a
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`function of a second validation signal (V2).1
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`Dkt. No. 175-7 at 16. Arguing that the limitation requires “that each histogram
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`calculation unit (HCU) forms a histogram representative of the parameter as a function of a
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`validation signal” is strong language. This may be sufficient to be a clear and unmistakable
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`1 Emphasis added in bold.
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`8 / 9
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`Petitioner LG Ex-1010, 0008
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`Case 2:20-cv-00050-JRG-RSP Document 192 Filed 06/26/20 Page 9 of 9 PageID #: 13740
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`surrender of subject matter regarding the argument that each HCU must form a histogram
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`representative of the parameter as a function of a validation signal.
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`However, while the diagram of the HCU is of a hardware embodiment, and suggests that
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`the HCU must be hardware, it is certainly not a clear and unmistakable surrender that “a
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`computer processor configured to execute” may be the equivalent of the required “hardware”
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`elements, especially the two or more, specialized HCUs. Furthermore, while the argument
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`discusses illustrations of histograms as a function of signals, it does not clearly and unmistakably
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`surrender that “hardware transmitting image frame data, whereby each frame is associated with a
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`time T, and each frame includes pixel data for the frame, with each pixel corresponding to a
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`position (x,y) or (i,j)” may be the equivalent of the element “said digital signal . . . in this space.”
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`IV. CONCLUSION
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`In sum, the Court finds that the PHE arguments made in Samsung’s PHE Brief are
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`unavailing. Accordingly, the Court does not bar IPT from asserting either the argument (1) that “a
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`computer processor configured to execute” is the equivalent of the required “hardware” elements,
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`especially the two or more, specialized Histogram Calculation Units (HCUs) or (2) that “hardware
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`transmitting image frame data, whereby each frame is associated with a time T, and each frame
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`includes pixel data for the frame, with each pixel corresponding to a position (x,y) or (i, j)” is the
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`equivalent of the element “said digital signal . . . in this space.”
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`9 / 9
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 26th day of June, 2020.
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`Petitioner LG Ex-1010, 0009
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