From:
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`
`Todd
`Director_PTABDecision_Review
`Usman Khan; Gregory Cordrey; Matthew.Satchwell@dlapiper.com; brent.yamashita@dlapiper.com;
`chris.duerden@us.dlapiper.com; erika.arner@finnegan.com; cory.bell@finnegan.com; yanyi.liu@finnegan.com;
`yinan.liu@finnegan.com; Andrew Patrick; IPR50095-0109IP1; Kenneth Darby; Karl Renner
`IPR2023-0344 Patent Owner"s Request for Director Review
`Thursday, August 1, 2024 3:38:37 PM
`Director_Review_344IPR_Filed.pdf
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear Director,
`
`SpaceTime3D, Inc., the Patent Owner in IPR2023-00344, respectfully recommends and
`requests Director Review or rehearing by the Delegated Review Panel of the Final Written
`Decision issued by the Board in this proceeding. Attached is a copy of Patent Owner’s
`Request for Director Review submitted today via P-TACTS.
`
`The Board’s Final Written Decision fails to resolve a case dispositive question of claim
`construction, namely whether “replacing said plurality of images … with one of said first,
`second, and third objects” requires the images to be replaced with the object that was
`previously generated (i.e., when the application was first opened), hence “said object,”
`thereby allowing the user to resume where they last left off with respect to said object and
`its application-specific data. Patent Owner argued for such a construction and Petitioner’s
`position was that “no such limitation is recited in the claims.” Despite this controversy, the
`Board failed to construe this limitation, which led to an erroneous legal conclusion of
`obviousness (as the prior art does not teach this limitation as properly construed). The
`Board’s obviousness determination is inconsistent with a related parallel proceeding
`(consolidated with the ‘344 IPR) where a similar limitation was construed, resulting in
`certain claims being found not unpatentable. See IPR2023-00242.
`
`The Request for Director Review addresses the following two issues, as ranked in order of
`priority, just as they are presented in Section III of Patent Owner’s Request for Director
`Review.
`
`1. Important Issue of Law: The Board failed to construe the phrase “one of said first,
`second, and third objects” despite a controversy between the parties, with Patent
`Owner’s presenting a construction that is consistent with the claims, supported by the
`specification, and logically consistent with findings in the related parallel proceeding,
`IPR2023-00242.
`
`2. Erroneous Conclusion of Law: – The Board’s failure to resolve the claim
`construction dispute resulted in its flawed obviousness conclusion, where Petitioner
`presented no evidence or arguments that a POSITA would have found this limitation,
`as properly construed, obvious over the prior art identified in the Petition, with the
`cited prior art actually teaching the opposite of that which is claimed, i.e., opening an
`application in response to interacting with image—not replacing the images with the
`previously generated object, thereby allowing the user to pick up where they last left
`off.
`
`IPR2023-0344
`Ex. 3100
`
`

`

`
`Respectfully -
`
`Todd Fitzsimmons
`FITZSIMMONS IP LAW
`todd@fitziplaw.com
`(213) 500-1178
`
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