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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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`_________________
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`Case IPR2023-00471
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`Patent No. 6,844,990
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`_________________
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`PATENT OWNER’S AUTHORIZED PRE-INSTITUTION SUR-REPLY
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`Case No.: IPR2023-00471
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`Docket No.: 688266-140IPR
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`I.
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`PETITIONER FAILS TO MEET ITS BURDEN UNDER § 325
`A.
`Petitioner’s Reply Fails to Save its Flawed Advanced Bionics
`Analysis
`Petitioner has the burden to show material error by the examiner when the
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`petition relies on the same prior art previously presented to the Office. Advanced
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`Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469,
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`Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Petitioner legally erred when it
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`concluded the first part of the Advanced Bionics framework prevented
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`discretionary denial in this case. See e.g., Petition at 73-74 (“Petition relies upon
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`grounds/arguments that are different than those previously presented to and
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`considered by the Office”)). Recognizing this flaw, Petitioner uses its Reply to
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`belatedly repackage its analysis under the second part. Reply at 1-2. Patent Owner
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`predicted this effort (POPR at 18-21) and Petitioner’s new Reply argument fails for
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`the same reasons Patent Owner previously presented.
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`First, neither the Petition nor the Reply cite any case or decision holding that
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`an examiner is deemed to only have considered explicitly enumerated paragraphs
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`or passages from a prior art reference. The only authority provided in the first
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`section of the Reply is an easily distinguishable PTAB panel decision – one
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`reference was submitted with 66 others in an information disclosure statement and
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`was not used or mentioned by the examiner, and another reference at issue was
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`only considered in later continuation applications. Vizio, Inc. v. Maxell, Ltd.,
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`IPR2022-01458, Paper 8 at 64-67 (PTAB Apr. 11, 2023). In contrast, the
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`examiner here substantively considered Shiota on the record in granting
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`reexamination, issuing a subsequent Office action, and allowing the claims. Ex.
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`1011 at 288-90, 308, 323, 343-44.
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`Second, Petitioner has not cured its defective expert testimony. Petitioner’s
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`Reply touts Dr. Kessler’s declaration as evidence a POSA reading Shiota’s
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`paragraph [0023] would understand it to encompass the relevant claim feature.
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`Reply at 1-2. But as Patent Owner previously explained (POPR at 20-21), the
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`declaration merely repeats the Petition’s conclusory assertions without citing any
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`supporting evidence or offering any technical reasoning why a POSA would have
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`understood paragraph [0023] in that manner. See Petition at 50-52; Ex. 1003 at
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`¶¶ 205-207. Dr. Kessler’s testimony is entitled to no weight and is ineffective to
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`show error by the examiner. See e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-
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`00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); Nespresso USA, Inc. v.
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`K-Fee System GmbH, IPR2021-01222, Paper 9 at 26 (PTAB Jan. 18, 2022). The
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`Reply ignores the issue entirely and leaves Petitioner with no legitimate evidence
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`to sustain its burden of showing material error by the Office.
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`Docket No.: 688266-140IPR
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`B.
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`Petitioner’s Burden to Show the Examiner Did Not Review All of
`Shiota is Not Met by the Mere Lack of Citation to Paragraph
`[0023]
`Petitioner now acknowledges the examiner reviewed more than just
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`paragraphs [0033]-[0041] from Shiota, in contrast to its earlier argument in the
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`Petition. Compare Petition at 74, 77-78 with Reply at 5. To distract from the
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`admission that the examiner reviewed more than just paragraphs [0033]-[0041],
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`Petitioner spends much of the Reply criticizing Patent Owner because many of the
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`Shiota citations highlighted in the POPR related to other claims. Reply at 3-5.
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`Petitioner’s compartmentalizing of the file history irrationally suggests the
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`examiner would intentionally ignore or forget portions of a prior art reference
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`depending on the claim at issue. Petitioner has no basis to assume that if the
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`examiner evaluated, e.g., Shiota’s paragraph [0024] with regard to claim 10, the
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`examiner would discard such knowledge when analyzing claim 27. Petitioner’s
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`argument further ignores that claims 10 and 27 share numerous overlapping
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`elements, including “correcting the non-linearity of the initial image” using “the
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`non-linear distribution function,” for which many of the relevant paragraphs were
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`cited. Ex. 1011 at 117.
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`Ultimately, Petitioner’s assertion of error rests on the absence of an explicit
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`mention of Shiota’s paragraph [0023], but Petitioner mischaracterizes the
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`reexamination record to arrive at this conclusion. For example, Petitioner contends
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`that “the Examiner explicitly identified Shiota’s paragraphs that she considered in
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`finding claim 27 allowable.” Reply at 4-5. Petitioner suggests the examiner
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`reviewed only the listed paragraphs before allowing claim 27, but the examiner
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`makes no such correlation. Per the examiner: “Shiota and Matsui each generally
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`teach correcting the non-linearity of an image captured by a lens (Shiota, Figure 1;
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`paragraphs [0001], [00022], and [0028]-[0041]; Matsui, Figures 2-4 and 6;
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`Abstract and paragraph [0025].” Ex. 1011 at 323. Nothing here indicates the
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`examiner considered only these paragraphs relevant to claim 27’s allowability.
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`Other PTAB panels have found it proper to infer that an examiner has
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`evaluated the entirety of a reference even though only specific portions are cited in
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`an Office action. See e.g., Juniper Networks, Inc. v. Mobile Telecomms. Techs.,
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`LLC, IPR2017-00642, Paper 31 at 17 (PTAB Mar. 14, 2018) (“In addressing
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`[reference] substantively and citing to portions of [reference], we determine that
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`the Examiner was aware of the entire reference and that he or she evaluated
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`[reference]’s applicability to the pending claims, notwithstanding the citation to
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`only certain portions of the reference”); Gen. Elec. Co. v. United Techs. Corp.,
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`IPR2018-01172, Paper 7 at 18 (PTAB Nov. 29, 2018) (“The mere fact that the
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`Examiner cited only paragraphs 3-5 and 18 of [reference] does not indicate that the
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`Examiner failed to consider paragraphs 22 and 23 of [reference]”). Here,
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`Docket No.: 688266-140IPR
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`Petitioner fails to demonstrate any reason why the mere lack of citation to Shiota’s
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`paragraph [0023] satisfies its burden to show error by the examiner.
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`II. THE PETITION SHOULD BE DENIED UNDER § 325
`For at least the reasons recited above and in Patent Owner’s previously filed
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`Preliminary Response, Patent Owner renews its request that the PTAB deny
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`institution of the Petition.
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`Date: June 6, 2023
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`Respectfully submitted,
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`By:
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`/Stephen E. Murray/
`Stephen E. Murray, Reg. No. 63,206
`Keith A. Jones, Reg. No. 67,781
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`Two Commerce Square
`2001 Market Street, Suite 2800
`Philadelphia, Pennsylvania 19103
`(215) 965-1330
`(215) 965-1331 (Fax)
`smurray@panitchlaw.com (E-Mail)
`kjones@panitchlaw.com (E-Mail)
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`John D. Simmons, Reg. No. 52,225
`Dennis J. Butler, Reg. No. 51,519
`PANITCH SCHWARZE BELISARIO & NADEL LLP
`Wells Fargo Tower
`2200 Concord Pike, Suite 201
`Wilmington, DE 19803
`(302) 394-6030
`(302) 394-6031 (Fax)
`jsimmons@panitchlaw.com (E-mail)
`dbutler@panitchlaw.com (E-mail)
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`5
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`Case No.: IPR2023-00471
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`Docket No.: 688266-140IPR
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`CERTIFICATE OF SERVICE UNDER 37 CFR § 42.6(e)
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`I hereby certify that a true copy of the foregoing PATENT OWNER’S
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`AUTHORIZED PRE-INSTITUTION SUR-REPLY has been served in its entirety
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`this 6th day of June 2023, by electronic mail on Petitioner’s lead and back-up
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`counsel, as follows:
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`W. Karl Renner
`Karan Jhurani
`David Holt
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`IPR50095-0114IP1@fr.com
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`/Stephen E. Murray/
`Stephen E. Murray
`Registration No. 63,206
`Attorney for ImmerVision, Inc.
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