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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 REQUEST FOR REHEARING
`UNDER 37 C.F.R. §§ 42.71(c)-(d)
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`Case No. IPR2023-00471
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`Docket No.: 688266-140IPR
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`TABLE OF CONTENTS
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`page
`INTRODUCTION ........................................................................................... 1
`I.
`REHEARING STANDARD OF REVIEW ..................................................... 2
`II.
`III. THE DECISION MISAPPREHENDED THE EXTENT OF DR.
`KESSLER’S TESTIMONY ON THE RELEVANT ISSUE .......................... 3
`Support for the Alleged Examiner Error Came from a Single
`Conclusory Paragraph of Dr. Kessler’s Declaration .................................. 3
`The Evidence is Entitled to No Weight Under Xerox and
`Cannot Satisfy Petitioner’s Burden to Show Error .................................... 6
`IV. CONCLUSION ................................................................................................ 8
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`A.
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`B.
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`i
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`Case No. IPR2023-00471
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`Docket No.: 688266-140IPR
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) .......................... 3
`Autel Intelligent Tech. Corp., Ltd. V. Orange Elec. Co., Ltd.,
`IPR2021-01545, Paper 8 (PTAB Apr. 8, 2022) ................................................... 6
`Becton, Dickinson and Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to
`§ III.C.5, first paragraph) ...................................................................................... 6
`Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277 (Fed. Cir. 2005) ............................................................................ 2
`Xerox Corp. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) ..................... 2, 6
`Statutes
`35 U.S.C. § 325(d) ................................................................................................. 1, 8
`Other Authorities
`37 C.F.R. § 42.65(a) ................................................................................................... 6
`37 C.F.R. § 42.71 ................................................................................................... 1, 2
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`ii
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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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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner respectfully requests
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`rehearing of the Board’s July 11, 2023 Decision Granting Institution of Inter
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`Partes Review (“Decision”) relating to U.S. Patent No. 6,844,990 (“the ‘990
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`patent”). The Decision misapprehended the quantity and quality of expert
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`testimony in declining to exercise discretion under 35 U.S.C. § 325(d) despite the
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`Petition being based on an exact reference combination from a prior
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`reexamination.
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`The Decision recognized that the Petitioner’s expert’s (Dr. David Kessler)
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`testimony constitutes the only evidence of record as to whether the reexamination
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`Examiner erred when interpreting Shiota’s paragraph [0023]. But the Decision
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`misapprehended how much Dr. Kessler provided in his declaration about whether
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`Shiota teaches the specific element at issue. Specifically, the Decision attributes
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`eight paragraphs from the declaration as supporting a supposed “detailed
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`explanation and interpretation of Shiota from the vantage point of the skilled
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`artisan.” In reality, only paragraph 205 addresses whether Shiota teaches the
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`relevant claim element, and that paragraph includes nothing more than a rehash of
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`the reference’s language and a conclusory assertion it meets the claim. When this
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`evidence is assigned proper weight under Xerox1 (i.e., little to none), Petitioner has
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`nothing left to satisfy its burden for demonstrating Examiner error. For at least this
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`reason, Patent Owner respectfully requests the Board grant rehearing of the
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`Decision and decline institution of this proceeding.
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`II. REHEARING STANDARD OF REVIEW
`When reconsidering a decision on institution, the Board reviews the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be
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`found where the decision is based on an erroneous legal interpretation, a factual
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`finding is unsupported by substantial evidence, or there is an unreasonable
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`judgment in weighing relevant factors. See e.g., Star Fruits S.N.C. v. U.S., 393
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`F.3d 1277, 1281 (Fed. Cir. 2005). The party requesting rehearing has the burden to
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`show the relevant decision should be modified. 37 C.F.R. §§ 42.71(d). The party
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`must specifically identify all matters that the Board is believed to have
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`misapprehended or overlooked, and where each matter was previously addressed in
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`the record. Id.
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`1 Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022)
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`(precedential).
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`2
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`III. THE DECISION MISAPPREHENDED THE EXTENT OF DR.
`KESSLER’S TESTIMONY ON THE RELEVANT ISSUE
`The Decision acknowledges that Dr. Kessler’s declaration testimony “is the
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`only evidence of record concerning what the skilled artisan would have
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`considered Shiota to teach.” Decision at 29 (emphasis added). Without this
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`singular piece of evidence, Petitioner would be unable to meet its burden to prove
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`error by the Examiner. Advanced Bionics, LLC v. MED-EL Elektromedizinische
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`Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential);
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`see POPR at 17; Sur-Reply at 1. The Decision erroneously credits Dr. Kessler
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`with providing a “detailed explanation and interpretation of Shiota from the
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`vantage point of the skilled artisan.” DI at 29. However, Dr. Kessler’s testimony
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`relevant to the material error in question is confined to one conclusory paragraph.
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`The precedential Xerox decision requires the Board to give such a declaration little
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`weight – stripping Petitioner of its only evidence of Examiner error.
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`A.
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`Support for the Alleged Examiner Error Came from a Single
`Conclusory Paragraph of Dr. Kessler’s Declaration
`The sole issue is whether the Examiner erred in interpreting Shiota’s
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`paragraph [0023] during the ‘990 patent’s reexamination. DI at 26, FN9; POPR at
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`19-21; Sur-Reply at 2. Petitioner contends Shiota’s teaching of an assumed radius
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`of 1 for a fisheye image and “[a]t the time of actually [sic] use, magnification
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`adjustment is performed” (Ex. 1012 at [0023]) equates to the claimed “correcting
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`the non-linearity…using at least…a size L of the obtained image” (Pet. at 77-78).
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`The Decision generously lists paragraphs 205-212 from Dr. Kessler’s
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`declaration as “detailed testimony” showing Examiner error. Decision at 28. This
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`goes beyond even Petitioner’s arguments, which only relied upon paragraphs 205-
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`207 relating to using “the size of the image disk…to correct the image.” See Pet.
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`at 77-78; POPR at 20; Reply at 2; Sur-Reply at 2. Of that, only paragraph 205
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`addresses how a skilled artisan would allegedly interpret Shiota’s paragraph [0023]
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`to read on the ‘990 patent claim language.2 Ex. 1003 at ¶ 205; POPR at 20.
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`Paragraph 205 from Dr. Kessler’s declaration is reproduced below in its
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`entirety with colored highlighting. The first sentence (highlighted in red) is a
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`conclusory introductory statement. Ex. 1003 at ¶ 205. The next two sentences
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`(highlighted in yellow) merely summarize or quote the text of Shiota’s paragraph
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`[0023]. Id.; see POPR at 20. The final sentence (highlighted in red) makes the
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`conclusory assertion that the person of ordinary skill in the art would have
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`2 Paragraph 206 contains another conclusory, unsupported assertion and goes on to
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`posit that a person of ordinary skill in the art would have modified Baker’s system
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`to include Shiota’s teachings, and paragraph 207 supposes it would have been
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`obvious to represent the image size in pixels. Ex. 1003 at ¶¶ 206-207.
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`understood the “magnification adjustment”to refer to the claimedsize L of the
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`image. Ex. 1003 at { 205; POPRat 20.
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`Suchis the extent of Dr. Kessler’s discussion of whether Shiota teaches
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`correcting an image’s non-linearity using the size L of the obtained image. Dr.
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`Kessler provides no further evidentiary support or any kind oftechnical
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`explanation regarding this conclusion or the relevant topic. See POPRat 20-21.
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`The Decision misapprehendedthe degree of detail in Dr. Kessler’s testimony
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`related to the specific inquiry of how the skilled artisan would interpret Shiota’s
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`paragraph [0023].
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`Docket No.: 688266-140IPR
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`B.
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`The Evidence is Entitled to No Weight Under Xerox and Cannot
`Satisfy Petitioner’s Burden to Show Error
`Once its true extent is revealed, Dr. Kessler’s relevant testimony clearly falls
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`within the scope of evidence the Director indicated must be given little weight.
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`See Xerox, Paper 9 at 14-15 (disregarding conclusory expert assertion that the prior
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`art’s “blocking the purchaser” requires claimed storing in a data record associated
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`with the user); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or no
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`weight”); POPR at 20; Sur-Reply at 2.
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`Where, as here, the only recognized evidence of Examiner error derives
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`from conclusory expert testimony entitled to little weight, a Petitioner is unable to
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`meet its burden to show error. See e.g., Autel Intelligent Tech. Corp., Ltd. V.
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`Orange Elec. Co., Ltd., IPR2021-01545, Paper 8 at 26 (PTAB Apr. 8, 2022)
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`(“Petitioner does not demonstrate error in the Examiner’s finding that [reference]
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`does not disclose the [] limitation” where expert cites no “objective support that
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`would give his testimony persuasive weight”); Becton, Dickinson and Co. v. B.
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`Braun Melsungen AG, IPR2017-01586, Paper 8 at 28 (PTAB Dec. 15, 2017)
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`(precedential as to § III.C.5, first paragraph) ((“[The expert’s] declaration does not
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`provide persuasive facts, data, or analysis to support the stated opinion. Without
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`such testimony, we are not persuaded that the mere existence of the elements in the
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`prior art warrants reconsideration of the prior art and arguments presented earlier
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`to the Office”); POPR at 20-21. Considering the nature of Dr. Kessler’s testimony
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`on this particular issue, and the Decision’s recognition that it constitutes “the only
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`evidence of record concerning what the skilled artisan would have considered
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`Shiota to teach,” Petitioner cannot be said to have satisfied its burden to show
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`Examiner error.
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`Docket No.: 688266-140IPR
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`IV. CONCLUSION
`For at least the reasons recited above, Patent Owner respectfully requests
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`that the Board grant rehearing of the Decision, vacate that Decision, and exercise
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`its discretion under 35 U.S.C. § 325(d) to deny institution of the Petition in this
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`matter.
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`Date: July 21, 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)
`
`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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`8
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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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`REQUEST FOR REHEARING UNDER 37 CFR §§ 42.71(c)-(d) has been served
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`in its entirety this 21st day of July 2023, by electronic mail on Petitioner’s lead and
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`back-up 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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