Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: July 11, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`Before KRISTINA M. KALAN, JOHN D. HAMANN, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`Opinion Dissenting filed by KALAN, Administrative Patent Judge.
`PER CURIAM.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 10
`Date: July 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`Before KRISTINA M. KALAN, JOHN D. HAMANN, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`Opinion Dissenting filed by KALAN, Administrative Patent Judge.
`PER CURIAM.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00471
`Patent 6,844,990 B2
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 2, 4, 27, 29, and 30 of U.S. Patent
`No. 6,844,990 B2 (Ex. 1001, “the ’990 patent”). ImmerVision, Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). With
`Board authorization, Petitioner filed a Preliminary Reply (Paper 8, “Reply”)
`and Patent Owner filed a Preliminary Sur-Reply (Paper 9, “Sur-Reply”).
`To institute inter partes review, we must determine that the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons
`discussed below, after considering the parties’ submissions and the evidence
`of record, we determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing with respect to at least one claim of the ’990 patent,
`and we institute inter partes review on all challenges raised in the Petition.
`37 C.F.R. § 42.108(a) (2022).
`A. Related Proceedings
`The parties identify the following district court litigations as related
`matters: ImmerVision, Inc. v. Apple, Inc., 1:21-cv-01733-MN-CJB (D. Del.)
`and ImmerVision, Inc. v. Apple, Inc., 1:21-cv-01484-MN-CJB (D. Del.).
`Pet. 80; Paper 3, 2–3 (Patent Owner’s Mandatory Notices). Petitioner
`further identifies the following district court litigations as related matters:
`ImmerVision, Inc. v. LG Electronics U.S.A., Inc., 1:18-cv- 01631 (D. Del.)
`and ImmerVision, Inc. v. LG Electronics U.S.A., Inc., 1:18-cv-01630
`(D. Del.). Pet. 80. Petitioner also identifies the following proceedings as
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`related matters: IPR2014-01438; Reexamination Request 90/013,410;
`IPR2020-00195; and IPR2020-00179. Id.
`B. Real Party-in-Interest
`Petitioner states, “Apple is a real party-in-interest.” Pet. 79. Patent
`Owner states that ImmerVision, Inc. is the real party-in-interest. Paper 3, 2.
`C. The ’990 Patent
`The ’990 patent is titled “Method for Capturing and Displaying a
`Variable Resolution Digital Panoramic Image.” Ex. 1001, code (54).
`The ’990 patent “relates to obtaining digital panoramic images and
`displaying panoramic images on computer screens.” Id. at 1:12–14.
`The ’990 patent explains that in order to avoid a displayed image sector
`having geometrical distortions, “the classical panoramic objective lenses
`must have a distribution function of the image points according to the field
`angle of the object points of a panorama that is as linear as possible.” Id.
`at 2:4–8. However, when digital enlargement increases using techniques of
`displaying a digital panoramic image sector on a computer screen, “the
`granulosity of the image appears as the limits of the resolution of the image
`sensor are being reached.” Id. at 3:1–9. The ’990 patent observes that for
`this problem of the low quality in enlargements “only certain zones of a
`panoramic image are of a practical interest and are likely to be expanded by
`the observer by means of a digital zoom.” Id. at 3:43–46. According to the
`’990 patent, using a panoramic objective lens that is not linear, which
`expands certain zones of the image and compresses other zones of the
`image, “the expanded zones of the image cover a number of pixels of the
`image sensor that is higher than if they were not expanded, and thus benefit
`from a better definition.” Id. at 3:66–4:6. The ’990 patent thus discloses
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`a method for capturing a digital panoramic image, by projecting
`a panorama onto an image sensor by means of a panoramic
`objective lens, in which the panoramic objective lens has an
`image point distribution function that is not linear relative to the
`field angle of object points of the panorama, the distribution
`function having a maximum divergence of at least ±10%
`compared to a linear distribution function, such that the
`panoramic image obtained has at least one substantially
`expanded zone and at least one substantially compressed zone.
`Id. at 4:11–21.
`Petitioner’s annotated version of Figure 5 is reproduced below:
`
`
`Pet. 5 (annotating Ex. 1001, Fig. 5). Figure 5 illustrates a classical system
`for taking panoramic shots using panoramic objective lens 15 (yellow)
`having optical axis OZ (horizontal orange line) and digital image sensor 17
`(vertical green line) arranged in the image plane of lens 15. Ex. 1001,
`6:65–7:2. Object points a, b, c, d (in red boxes) are projected through
`lens 15 and captured as respective image points a’, b’, c’, d’ (in blue boxes)
`at image sensor 17. Id. at 7:2–14. Each of field angles α1, α2, -α2, -α1 of
`corresponding object points a, b, c, d is an angle that an incident light ray
`passes through the corresponding object point and center p of panorama PM.
`Id. at 7:2–10. On image sensor 17, image points a’, b’, c’, and d’ are located
`at distances d1, d2, -d2, -d1, respectively, from the center of the image. Id.
`at 7:11–14.
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`Figure 7A of the ’990 patent is reproduced below:
`
`
`Fig. 7A shows the non-linearity of a panoramic objective lens. Ex. 1001,
`6:29–30. The circles represent distributions of image points corresponding
`to object points having an identical field angle on a disk. Id. at 2:15–17.
`Because of the non-linear panoramic objective lens, circles C10 and C20 are
`further from the center of the image and further from each other whereas
`circles C30 to C90 are closer to each other, thereby representing a panoramic
`image having an expanded zone in the center and a compressed zone
`towards the edge of the image disk. Id. at 8:21–28.
`The ’990 patent further discloses that the point of “maximum
`divergence” refers to the point on an image point distribution function plot
`that is farthest away from a corresponding point on a linear distribution
`function plot. Id. at 8:44–67. The maximum divergence from the non-
`linearity of a panoramic objective lens is demonstrated in Figure 8, which is
`reproduced below:
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`Figure 8 shows an image point distribution function Fd2 plotted on an x-axis
`that represents the field angle α of the object point and on a y-axis that
`represents the relative distance dr of an image point in relation to the center
`of the image. Id. at 8:34–38, 9:36–52. Distribution function Fd2 here has a
`point of maximum divergence Pd at the angle α = 70° and at a relative
`distance dr = 0.3 in relation to the center of the image, and the greatest
`relative distance between image point distribution function Fd2 and linear
`distribution function Fdc is found between points Pd and Pdl. Id. at 9:36–
`52.
`
`Petitioner’s annotated version of Figure 13 is reproduced below:
`
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`Patent 6,844,990 B2
`Pet. 12 (annotating Ex. 1001, Fig. 13). Figure 13 illustrates schematically an
`image point mapping method for correcting optical distortion of an initial
`image that was obtained from using the non-linear distribution function of
`the objective lens. Ex. 1001, 6:46–47, 10:12–17. Display window DW
`having image point P(px, py, pz) is projected on an image disk that has
`size L (within large red box) and projected to image point p(pu, pv) that has
`a coordinate system with center O’ (within small red box) which is the
`center of the image disk and axes O’U and O’V. Ex. 1001, 12:59–14:35.
`Using an algorithm, image point p(pu, pv) is obtained using equations, such
`as pu = L*U*Fd(α) and pv = L*U*Fd(α), in which the size of the image
`disk L is multiplied with the non-linear distribution function Fd at an
`angle α. Id. at 12:66–14:35.
`D. Illustrative Claim
`Claim 27 is reproduced below.
`27[pre]. A method for displaying a digital panoramic image,
`the method comprising:
`[a] obtaining a digital panoramic image by projecting a
`panorama onto an image sensor using a panoramic objective
`lens,
`[b] the panoramic objective lens having an image point
`distribution function that is not linear relative to a field angle
`of object points of the panorama,
`[c] the distribution function having a maximum divergence of at
`least +/– 10% compared to a linear distribution function,
`[d] such that the panoramic image obtained has at least one
`substantially expanded zone and at least one substantially
`compressed zone; and
`[e] displaying the obtained panoramic image by correcting the
`non-linearity of the initial image,
`[f] performed by retrieving image points on the obtained image
`in a coordinate system of center O' using at least the non-
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`linear distribution function and a size L of the obtained
`image.
`Ex. 1001, 1:54–2:3 (annotations added to correspond to Petitioner’s
`designations). 1
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims would have been unpatentable on the
`following grounds:
`Ground Claims Challenged 35 U.S.C. §2
`Reference(s)/Basis
`Baker, 3 Shiota4
`1
`2, 4, 27, 29
`103
`Baker, Shiota, Fisher5
`2
`29, 30
`103
`In support of its unpatentability arguments, Petitioner relies on the
`Declaration of David Kessler, Ph.D. (Ex. 1003).
`II. ANALYSIS
`
`A. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2021).
`Under Phillips, claim terms are afforded “their ordinary and customary
`meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary
`meaning of a claim term is the meaning that the term would have to a person
`of ordinary skill in the art in question at the time of the invention.” Id.
`
`
`1 Ex Parte Reexamination Certificate US 6,844,990 C1, issued May 8, 2015.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’990 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of § 103.
`3 US 5,686,957, issued November 11, 1997 (Ex. 1006).
`4 EP 1 028 389 A2, published August 16, 2000 (Ex. 1012).
`5 US 3,953,111, issued April 27, 1976 (Ex. 1009).
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`at 1313. Only terms that are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Realtime Data, LLC
`v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to
`construe ‘only those terms . . . that are in controversy, and only to the extent
`necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Petitioner states that it “is applying the constructions adopted in
`IPR2020-00195 for certain applicable claim terms in the Challenged
`Claims” and provides constructions for the claim terms “panoramic
`objective lens,” “object points of the panorama,” “image point,” “field angle
`of object points,” “maximum divergence,” “expanded zone,” and
`“compressed zone.” Pet. 2–4. Petitioner, however, does not do more. Id.
`Patent Owner states that solely for purposes of this Preliminary
`Response, it “does not object to the constructions proposed by Petitioner.”
`Prelim. Resp. 13.
`As our Consolidated Trial Practice Guide explains, “[i]f a petitioner
`believes that a claim term requires an express construction, the petitioner
`must include a statement identifying a proposed construction of the
`particular term and where the intrinsic and/or extrinsic evidence supports
`that meaning.” Consolidated Trial Practice Guide (November 2019)6
`(“CTPG”), 44 (emphasis added). Moreover, the CTPG provides that we
`should “take into account the prosecution history that occurred previously in
`proceedings at the Office prior to the IPR . . . proceeding at issue, including
`in another AIA proceeding.” Id. at 46. Petitioner does not identify where in
`
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`the record of the IPR2020-00195 proceeding that these terms were
`construed, and why, if at all, those constructions should have preclusive
`effect here. Pet. 2–4.
`For purposes of our institution decision, we need not expressly
`construe any claim term. See Realtime Data, 912 F.3d at 1375.
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`had at least a Bachelor’s degree in Physics, Optical Engineering, and/or
`Electrical Engineering and at least five years’ experience in developing and
`designing optical imaging systems and have familiarity with image
`processing algorithms and optical design software” and that “[s]uperior
`education could compensate for a deficiency in work experience, and vice-
`versa.” Pet. 15 (citing Ex. 1003 ¶¶ 24–25). Patent Owner states that solely
`for purposes of this Preliminary Response, it “does not object to Petitioner’s
`definition of a [person of ordinary skill in the art].” Prelim. Resp. 13.
`Accordingly, for the purposes of this Decision, we adopt Petitioner’s
`proposal regarding the level of one of ordinary skill in the art with the
`exception of the open-ended phrase “at least,” which expands the range of
`experience indefinitely without an upper bound. The level of ordinary skill
`in the art is also reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Asserted Prior Art
`1. Baker (Ex. 1006)
`Baker is titled “Teleconferencing Imaging System with Automatic
`Camera Steering” and is directed to a system that includes “a video camera
`and a lens system” that “provides a panoramic display that can electronically
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`select portions of that image and, through warping techniques, remove any
`distortion from the most significant portions of the image which lie from the
`horizon up to approximately 30 degrees in a hemispheric viewing area.”
`Ex. 1006, codes (54), (57). Baker explains that although conventional lenses
`“achieve a view of a large field, the valuable content from the peripheral
`areas lacks in potential image quality (resolution) mapping because the
`imaging device and system does not differentiate between these areas and
`the central areas of less valuable detail.” Id. at 3:60–64. Baker purports to
`resolve this problem by providing a hemispheric electronic image
`manipulator subsystem having a capture lens “that allows for useful
`electronic manipulation of a segmented portion of a hemispheric scene” by
`creating an electronic image that is warped to have “a desired subview in
`proper aspect ratio.” Id. at 5:37–47. “The lens provides an enhanced view
`of the valuable information in the scene’s periphery by imaging the field of
`view to the image plane such that the ratio of the size of the smallest detail
`contained within the periphery of the scene to the size of the smallest
`resolving pixel of an image device is increased,” in which “the peripheral
`content must map to a larger percentage of a given image detector area” and,
`simultaneously, “the mapped image of the central area of the scene must be
`minimized by the lens so that it does not interfere with the peripheral content
`now covering a wider annulus in the image plane.” Id. at 5:57–6:1.
`When a portion of the scene is to be displayed, a transform processor
`subsystem “electronically manipulates the scene for display as a perspective-
`correct image on a display device.” Ex. 1006, 6:5–9. Baker discloses:
`The transform processor subsystem compensates for the
`distortion or difference in magnification between the central and
`peripheral areas of the scene caused by the lens by applying
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`appropriate correction criteria to bring the selected portion of the
`scene into standard viewing format. The transform processor
`subsystem can also more fully compensate for any aberrations of
`the enhanced peripheral image because of the image’s improved
`resolution as it covers a larger portion of the image device
`(increased number of pixels used to detect and measure the
`smallest detail in the periphery image). More pixels equates to
`more measurement data, hence more accurate data collection.
`Id. at 6:12–24.
`2. Shiota (Ex. 1012)
`Shiota is titled “Arithmetic Unit for Image Transformation” and
`relates to transforming a fisheye image obtained by using a fisheye lens into
`a plane image for display. Ex. 1012, codes (54), (57). Shiota explains that
`an image produced by the fisheye lens is “distorted as compared with an
`image obtained by using the standard lens and is very hard for the operator
`to watch.” Id. ¶ 3. Shiota purports to resolve this problem by providing a
`unit for image transformation that comprises:
`a first coordinate calculating unit for obtaining first projection
`coordinates on a fisheye image face as an imaginary object face
`derived by projecting coordinates on the plane image; and a
`second coordinate calculating unit for obtaining second
`projection coordinates derived by projecting the first projection
`coordinates obtained by the first coordinate calculating unit onto
`the fisheye image face.
`Id. ¶ 8.
`In a first step, coordinates on a surface of a hemisphere (X, Y, Z) are
`obtained from a projection from a plane display image (u, v) and then
`corresponding coordinates in the fisheye image (p, q) are obtained from a
`projection from the hemisphere. Ex. 1012 ¶¶ 22–23. A coefficient k1, taken
`from a lookup table for various distances L from the origin in the (u, v)
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`coordinates, is used to map coordinates from the hemispherical surface to
`the plane image in the (X, Y, Z) coordinate system. Id. ¶¶ 28–32.
`In a second step, a distribution function of the lens is used to compute
`a coefficient k2, which equals h (the height from the origin of the fisheye
`image face and defined by the distribution function) divided by distance r
`from the origin. Ex. 1012 ¶¶ 36–40. These steps, among others, provide a
`calculating procedure for image transformation to correct for or compensate
`distortions in an image that is captured by a fisheye lens. Id. ¶¶ 8, 26–27.
`3. Fisher (Ex. 1009)
`Fisher is titled “Non-linear Lens” and discloses a non-linear lens that
`“possesses distortion characteristics which are such that objects along the
`optical axis of the lens occupy disproportionately large areas of the image
`cast by the lens, whereas objects near the periphery of the field of view
`occupy a disproportionately small area of the image.” Ex. 1009, codes (54),
`(57). “The distortion characteristics approximate the formula H=sin1/3θ
`where H is [the] height measured from the optical axis and θ is the angle
`measured from the optical axis.” Id. at code (57). Fisher’s non-linear lens
`has three lens groupings: A, B, and C. Id. at 5:44–50. The first lens
`grouping A is “a triplet and provides the mapping function, that is the unique
`distortion which is essentially defined by the formula H=sin1/3θ.” Id. at
`5:52–55. The first lens grouping A has lenses with non-spherical lens
`surfaces. Id. at 5:61–6:2.
`D. Analysis
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
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`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon). Petitioner cannot
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements,” but “must instead articulate specific reasoning, based on
`evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when presented, objective evidence of
`nonobviousness, i.e., secondary considerations.7 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). Subsumed within the Graham factors are the
`requirements that all claim limitations be found in the prior art references
`and that the skilled artisan would have had a reasonable expectation of
`success in combining the prior art references to achieve the claimed
`
`
`7 At this stage, Patent Owner does not present any objective evidence of
`nonobviousness as to any of the challenged claims.
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`invention. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)).
`1. Ground 1
`Petitioner asserts that Baker in view of Shiota renders obvious
`claims 2, 4, 27, and 29. Pet. 15. Petitioner presents arguments directed to
`the limitations of claim 27 as follows:
`27[pre] A method for displaying a digital panoramic image, the
`method comprising,8 (Pet. 27–32 (citing Ex. 1003 ¶¶ 142–152, Ex. 1006,
`Abstract, 1:9–13, 5:16–20, 5:37–6:36, 7:45–8:9, 8:17–35, 8:58–9:14, 10:61–
`11:6, 11:52–12:55, 13:9–32, 13:56–65, 14:9–17, 14:42–15:59, Figs. 1, 1A,
`5, 3AA–3AC, 3BA–3BB, 6A–6B; Ex. 1012, Abstract, ¶¶ 1–2, 4, 7–10, 21–
`26, 48–50, claims 1, 5));
`27[a] obtaining a digital panoramic image by projecting a panorama
`onto an image sensor using a panoramic objective lens, (Pet. 32–36 (citing
`Ex. 1003 ¶¶ 153–162; Ex. 1006, Abstract, 1:10–14, 6:29–34, 7:12–25,
`10:22–12:22, 12:33–55, 13:9–65, 14:9–36, Figs. 1, 5, 6A–6B, claim 1; Ex.
`1012 ¶¶ 2–7, 21–26, 48–50; Ex. 1011, 135, 229));
`27[b] the panoramic objective lens having an image point
`distribution function that is not linear relative to a field angle of object
`
`
`8 We express no opinion on whether the preamble is limiting.
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`points of the panorama, (Pet. 36–40 (citing Ex. 1003 ¶¶ 163–173; Ex. 1006,
`Abstract, 4:24–29, 5:37–6:4, 6:29–56, 8:16–55, 9:62–10:5, 10:22–11:6,
`11:42–51, 11:52–12:55, 14:18–26, 15:13–19, claims 1–4, Figs. 1, 3AA–
`3AC, 3BA–3BB, 5; Ex. 1011, 135, 229));
`27[c] the distribution function having a maximum divergence of at
`least +/-10% compared to a linear distribution function, (Pet. 40–42 (citing
`Ex. 1003 ¶¶ 175–181; Ex. 1011, 135–136, 229));
`27[d] such that the panoramic image obtained has at least one
`substantially expanded zone and at least one substantially compressed zone,
`and (Pet. 42–45 (citing Ex. 1003 ¶¶ 182–192, 50–61; Ex. 1006, Abstract,
`5:37–6:4, 6:29–56, 8:17–55, 10:37–12:55, 13:29–65, 14:18–26, 15:14–19,
`Figs. 3BA–3BB, 2A–2B, 5, claims 1–4));
`27[e] displaying the obtained panoramic image by correcting the
`non-linearity of the initial image, (Pet. 45–48 (citing Ex. 1003 ¶¶ 191–198,
`70–74; Ex. 1006, Abstract, 5:31–37, 6:5–35, 7:6–11, 8:32–55, 9:5–13,
`14:41–16:47, Figs. 1, 6A–6B, claims 1, 12–14; Ex. 1012, Abstract, ¶¶ 1, 4–
`4, 14–17, 21–26, 29–42, 44, 48–50, claim 1));
`27[f] performed by retrieving image points on the obtained image in
`a coordinate system of center O’ using at least the non-linear distribution
`function and a size L of the obtained image. Pet. 48–55 (citing Ex. 1003
`¶¶ 199–213, Ex. 1006, Abstract, 6:5–23, 13;15–28, 14:41–16:46, claims 12–
`14; Ex. 1012, Abstract, ¶¶ 1, 4–5, 14–17, 21–26, 29–42, 44, 48–50, claim 1;
`Ex. 1011, 117–118).
`Petitioner argues that one of ordinary skill in the art “would have
`understood that Baker’s system corrects or compensates for the distortion
`introduced into the image by its objective lens (which has a non-linear image
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`distribution)” but that “Baker does not expressly describe how such
`corrections are applied as part of its image transformation.” Id. at 22–23.
`Shiota “discloses compensation or correction of distortion in an image
`captured by a fisheye lens using a non-linear distribution function.” Id.
`at 23. Thus, according to Petitioner, “implementing Baker’s image
`transformation functionality using Shiota’s described technique . . . would
`have amounted to the use of a known technique to improve similar devices
`in the same way, and combining prior art elements according to known
`methods to yield predictable results.” Id. at 24 (citing Ex. 1003 ¶¶ 133–
`134). Additionally, one of ordinary skill in the art “would have been
`motivated to implement Shiota’s specific image transformation
`functionality—namely, the use of the non-linear distribution function—as
`part of the image transformation functionality already contemplated and
`provided by Baker’s transform processing subsystem,” with a “reasonable
`expectation of success.” Id. at 26 (citing Ex. 1003 ¶¶ 137–138).
`Petitioner presents additional arguments directed to claims 2, 4,
`and 29, which depend from claim 27. Pet. 55–62.
`At this stage of the proceeding, Patent Owner does not substantively
`dispute Petitioner’s allegations under Ground 1. See generally Prelim. Resp.
`Based on the record before us, including the reasons stated in the
`Petition at pages 15–62, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its challenge to claims 27, 2, 4,
`and 29.
`2. Ground 2
`Petitioner argues that Baker in view of Shiota and Fisher would have
`rendered obvious claims 29 and 30, which depend from claim 27. Pet. 62–
`
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`Patent 6,844,990 B2
`70. Claim 29 requires that the “objective lens comprises a set of lenses
`forming an apodizer” and claim 30 requires that “the set of lenses forming
`an apodizer comprises at least one aspherical lens.” Id. at 69. Petitioner
`relies on “Fisher’s teachings of implementing one or more aspheric lenses as
`part of the combination’s panoramic objective lens to control the objective
`lens’ angular distribution and thereby achieve the same non-linear image
`distribution.” Id. at 70 (citing Ex. 1003 ¶¶ 257–260).
`At this stage of the proceeding, Patent Owner does not substantively
`dispute Petitioner’s allegations under Ground 2. See generally Prelim. Resp.
`Having reviewed Petitioner’s arguments and evidence, on this record,
`we determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing on its challenge to claims 29 and 30.
`E. Discretion under 35 U.S.C. § 325(d)
`We have discretion to deny review when “the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`35 U.S.C. § 325(d). In that respect, Section 325(d) provides that the
`Director may elect not to institute a proceeding if the challenge to the patent
`is based on matters previously presented to the Office. Advanced Bionics,
`LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper
`6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).
`In evaluating the exercise of discretion to deny institution under
`§ 325(d), the Board applies a two-part framework: (1) first, we determine
`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 the
`first part of the framework is satisfied, we examine whether the petitioner
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`Patent 6,844,990 B2
`has demonstrated that the Office erred in a manner material to the
`patentability of challenged claims. Id. at 8.
`In applying the two-part framework, we consider several non-
`exclusive factors (“the Becton, Dickinson factors”), including:
`(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) of the Becton, Dickinson factors relate to
`whether the art or arguments presented in the petition are the same or
`substantially the same as those previously presented to the Office. Advanced
`Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the
`petitioner has demonstrated a material error by the Office” in its prior
`consideration of that art or arguments. Id. Only if the same or substantially
`the same art or arguments were previously presented to the Office do we
`then consider whether a petitioner has demonstrated a material error by the
`Office. Id. “At bottom, this framework reflects a commitment to defer to
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`previous Office evaluations of the evidence of record unless material error
`is shown.” Id. at 9 (emphasis added).
`1. Prosecution History
`The application that resulted in the ’990 patent was filed on
`November 12, 2003, as a continuation of Application No. PCT/FR02/01588,
`filed on May 10, 2002. Ex. 1001. The ’990 patent claims foreign priority to
`FR Application 01 06261 filed on May 11, 2001. Id.
`During the original prosecution of the ’990 patent, Fisher (Ex. 1006),
`and the foreign counterpart of Baker (Ex. 1005) were cited to the Examiner
`by the Applicant.
`On September 3, 2014, Panasonic System Networks Co., Ltd.
`(“Panasonic”) petitioned for inter partes review of the ’990 patent
`(“Panasonic IPR”). IPR2014-01438, Paper 2. On November 21, 2014, the
`parties in that proceeding filed a joint motion to terminate the Panasonic IPR
`due to settlement (id., Paper 9), which was granted on November 26, 2014
`(id., Paper 11). On the same day, the Panasonic IPR was terminated, the
`Patent Owner requested ex parte reexamination of claims 1–4, 6–7, 10–11,
`15–20, 22–23, and 25 of the ’990 patent using the same art from the then-
`terminated Panasonic IPR. Ex. 1011, 116–118, 226–237. Patent Owner
`filed along with the reexamination request an amendment to claim 10 to
`attempt to distinguish over the Baker-
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