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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`APPLE, INC.
`Petitioner,
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`v.
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`IMMERVISION, INC.,
`Patent Owner
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`Case IPR2023-00471
`Patent 6,844,990
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`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
`I. THE PETITION SHOULD NOT BE DENIED UNDER § 325(D)
`A. ImmerVision’s Assertion of No Showing of Error Disregards the Peti-
`tion’s Detailed Analysis of Material Error
`ImmerVision’s assertion that the Petition made “no attempt to show any ma-
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`terial error by the Office” (POPR, 17) is belied by the Petition’s multi-page §325(d)
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`analysis, providing a detailed walkthrough of the ’990 Patent’s reexamination to
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`demonstrate how the Examiner overlooked Shiota’s pertinent teachings—particu-
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`larly as they would be understood by a POSITA. Petition, 73-79. Indeed, the Petition
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`identified evidence of ImmerVision directing the Examiner to a subset of Shiota’s
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`disclosure on image transformation, and ImmerVision’s failure to identify or even
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`address during prosecution other teachings in Shiota that are more relevant to claim
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`27’s feature of using size L of the image for correcting image non-linearity. Id.
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`As the Petition explains, the ’990’s prosecution did not reference ¶ 23 of Shi-
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`ota (shown below; annotated), which provides that (1) image size (referred to as
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`image circle diameter) differs according to the
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`image pickup device’s size, and (2) the image
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`transformation operations assume the image’s
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`size as 1 and perform “magnification adjust-
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`ment” in “actual[] use” where the image and image pickup device may have different
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`sizes. Petition, 50-51, 77-78. Petitioner highlights the significance of this unrecog-
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`nized disclosure, offering expert testimony explaining how a POSITA reading this
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`1
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
`disclosure in the context of ¶¶ 24-26 (describing that the parameters for image trans-
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`formation are “obtained from” the “magnification of the image”) would have under-
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`stood that the ¶ 23 reference to “magnification adjustment” during image transfor-
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`mation accounts for the image pickup device’s actual size (i.e., image disk)—and by
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`extension, the image’s actual size. Petition, 50-51, 77-78; APPLE-1003, ¶¶205-207.
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`The Petition expressly pointed out that the reexamination does not address these
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`teachings in Shiota, and that the Office was without access to evidence of how a
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`POSITA would have understood the unattended-to Shiota teachings. Id.
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`Given this detailed presentation of evidence and upon demonstrating the reex-
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`amination record’s silence in considering the same, the Petition concluded that
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`“[h]ad this evidence been properly put forth and considered by the Office, the Office
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`would not have reached its erroneous finding of patentability of claim 27.” Petition,
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`78. Indeed, the Petition’s provided evidence presents a “compelling case on the mer-
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`its” that supports the conclusion “that the Office erred in a manner material to pa-
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`tentability,” which is only underscored by ImmerVision’s lack of reasoned technical
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`arguments to the contrary (other than a conclusory, two-sentence long attorney ar-
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`gument regarding Shiota’s magnification adjustment teachings (see POPR, 9)). See
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`Vizio, Inc. v. Maxell, Ltd., IPR2022-01458, Paper 8 at 64-67 (PTAB Apr. 11, 2023).
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`B. ImmerVision Mischaracterizes the Reexamination Record to Incorrectly
`Suggest that the Examiner Considered Shiota’s Pertinent Teachings
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`2
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
`ImmerVision cobbles together independent portions of the reexamination rec-
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`ord to next advance its misleading narrative that “[t]here is no evidence the examiner
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`skipped over the identified paragraphs in Shiota, particularly when the description
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`around it was explicitly under review for the feature at issue here (size L of the
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`obtained image as a factor in correcting non-linearity).” POPR, 19 (emphasis added).
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`To support this conclusion, ImmerVision constructs two listings of Shiota’s para-
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`graphs from distinct portions of the reexamination proceeding: (1) citations by Ex-
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`aminer when contending that claim 27 is allowable (¶¶ 1, 22, 28-41); and (2) cita-
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`tions by ImmerVision in its detailed explanation of pertinency filing (¶¶ 24, 30-35,
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`37-42). POPR, 19; APPLE-1011, 323, 117-118. As explained below, these citations
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`leave out important detail—which when viewed in proper context—leads to the rea-
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`sonable inference that the Examiner did not actually consider or rely upon the Peti-
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`tion’s disclosures in ¶ 23 of Shiota for the above-recited claim 27 feature, and that
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`she similarly did not consider related disclosures in ¶¶ 24-26 for this same feature
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`(added in a separate paper than the one in which reference was made to ¶ 24).
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`First, ImmerVision contends that it “highlighted Shiota’s paragraphs” 24, 30-
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`35, 37, 42, and 49, in the “detailed explanation of pertinency” in the reexamination
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`request. POPR, 19; APPLE-1011, 117-118. ImmerVision, however, omits that these
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`paragraphs were cited in a claim chart provided with respect to claim 10 (in its una-
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`mended form)—not claim 27—and that claim 10 did not recite the relevant claim
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`3
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
`27 feature of “correcting the non-linearity of the initial image” using the “size L of
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`the obtained image.” It is also irrefutable that ImmerVision did not identify ¶¶ 23,
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`25, and 26 of Shiota. Even the relied-upon quote in ¶ 24 of Shiota only states that,
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`for image transformation, the “projecting position on the image pickup face” of a
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`point on a “plane image is obtained” (APPLE-1011, 117)—but does not mention
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`Shiota’s relevant teaching of “magnification adjustment” that accounts for actual
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`size of images and image pickup devices.
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`Second, notably absent from the POPR are Shiota’s paragraphs that ImmerVi-
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`sion itself identified to advocate for claim 27’s allowability. Specifically, ImmerVi-
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`sion submitted a preliminary amendment separate from its reexamination request, in
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`which it added claim 27, cited to ¶¶ 33-41 in Shiota, and argued that Shiota does not
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`disclose the relevant claim 27 feature because it purportedly does “not utilize[]” the
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`“size of the image disk” to correct the image. APPLE-1011, 250, 238-252; Petition,
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`77. ImmerVision did not identify ¶¶ 23-26 in Shiota, or address its teachings of
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`“magnification adjustment” during image transformation that accounts for differing
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`size of images and image pickup devices in actual use. ImmerVision also does not
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`dispute that these teachings are absent from Shiota’s ¶¶ 33-41 that it identified.
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`Third, the Examiner explicitly identified Shiota’s paragraphs that she consid-
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`ered in finding claim 27 allowable—but did not include ¶¶ 23-26 in Shiota or the
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`associated subject matter that is relied upon in Petition for the claim feature at issue.
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`4
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
`The Examiner’s reasons for allowance identified ¶¶ 1, 22, and 28-41 in Shiota. AP-
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`PLE-1011, 323. The Examiner thus broadened her review of Shiota beyond ¶¶ 33-
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`41 identified by ImmerVision, and considered additional paragraphs (1, 22, 28-32).
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`Yet, the Examiner did not identify any of Shiota’s disclosures (¶¶ 23-26) that are
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`relied upon in the Petition for the relevant claim 27 feature, nor did she address/men-
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`tion the pertinent teachings of “magnification adjustment” in actual use and the im-
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`age circle diameter differing due to the size of the image pickup device. These teach-
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`ings are also not addressed in the additional paragraphs identified by the Examiner.
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`Thus, contrary to ImmerVision’s arguments, there is explicit evidence of Shi-
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`ota’s disclosures that were cited and considered in determining claim 27 allowable,
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`and those disclosures do not include or address the Petition’s relied-upon teachings
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`in Shiota for the feature at issue (size L of the obtained image is a factor in correcting
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`the
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`image’s non-linearity). See Advanced Bionics, LLC v. Med-El El-
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`ektromedizinische Gerate Gmbh, IPR2019-01469, Paper 6 at 10 (PTAB Feb. 13,
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`2020) (when “the Office’s previous consideration of the art is not well developed
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`or silent, then a petitioner may show the Office erred by overlooking something
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`persuasive.”). Even if the Examiner considered these portions of Shiota—which her
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`own account states she did not—the Petition explains the Examiner’s error in failing
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`to appreciate their significance to the relevant claim 27 feature. For these and addi-
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`tional reasons in the Petition, the Petition should not be denied under § 325(d).
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`5
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`Dated: May 30, 2023
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
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`Respectfully submitted,
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`/Karan Jhurani/
`W. Karl Renner, Reg. No. 41,265
`Karan Jhurani, Reg. No. 71,777
`David Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Case No. IPR2023-00471
`Attorney Docket No. 50095-0114IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on May 30,
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`2023, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response, were provided via email, to the Patent Owner, by serving
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`the correspondence address of record as follows:
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`Stephen E. Murray, smurray@panitchlaw.com
`Keith A. Jones, kjones@panitchlaw.com
` PANITCH SCHWARZE BELISARIO & NADEL LLP
`Two Commerce Square
`2001 Market Street, Suite 2800
`Philadelphia, PA 19103
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`John D. Simmons, jsimmons@panitchlaw.com
`Dennis J. Butler, dbutler@panitchlaw.com
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`Wells Fargo Tower
`2200 Concord Pike, Suite 201
`Wilmington, DE 19803
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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