`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`______________________
`
`AVER INFORMATION INC., AND IPEVO, INC.
`AVER INFORMATION INC., AND IPEVO, INC.
`PETITIONER
`
`V.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.
`PATENT OWNER
`_______________________________
`
`CASE: IPR2017-02108
`U.S. PATENT NO. 8,508,751
`U.S. PATENT NO. 8,508,751
`__________________________
`
`
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S
`MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`PETITIONER
`
`V.
`
`PATENT OWNER
`
`CASE: IPR2017-02108
`
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S
`
`MOTION TO AMEND
`
`MAIL STOP PATENT BOARD
`
`PATENT TRIAL AND APPEAL BOARD
`
`U.S. PATENT AND TRADEMARK OFFICE
`
`PO. BOX 1450
`
`MAIL STOP PATENT BOARD
`PATENT TRIAL AND APPEAL BOARD
`U.S. PATENT AND TRADEMARK OFFICE
`P.O. BOX 1450
`ALEXANDRIA, VA 22313-1450
`ALEXANDRIA, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`
`List of Exhibits1
`
`Ex. 1001 U.S. Patent No. 8,508,751
`
`Ex. 1002 U.S. Patent Application Publication No. 2005/0078052 (“Morichika”)
`
`Ex. 1003 U.S. Patent No. 7,239,338 (“Krisbergh”)
`
`Ex. 1004 U.S. Patent Application Publication No. 2001/0012051 (“Hara”)
`
`Ex. 1005 U.S. Patent No. 7,148,911 (“Mitsui”)
`
`Ex. 1006 U.S. Patent Application Publication No. 2004/0174444 (“Ishii”)
`
`Ex. 1007 U.S. Patent No. 6,965,460 (“Gann”)
`
`Ex. 1008 RESERVED
`
`Ex. 1009 RESERVED
`
`Ex. 1010
`
`ITC 337-TA-1045, PO’s Initial Claim Construction Brief
`
`Ex. 1011
`
`ITC 337-TA-1045, PO’s Reply Claim Construction Brief
`
`Ex. 1012 RESERVED
`
`Ex. 1013
`
`IPR2016-00661, PTAB Decision
`
`Ex. 1014
`
`ITC 337-TA-1045, ITC Claim Construction Order
`
`
`
` 1
`
` Citations to non-patent publications are to the original page number of the
`
`publication, and citations to U.S. patents are to column:line number of the patents,
`
`unless paragraph numbers are provided.
`
`
`
` i
`
`
`
`
`
`
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`Ex. 1015 U.S. Patent No. 6,744,109
`
`Ex. 1016 Correspondence with Patent Owner regarding claim 18
`
`Ex. 1017 Non-final Rejection for U.S. Patent No. 8,508,751, dated 11/6/2012
`
`Ex. 1018 Response to Non-final Rejection for U.S. Patent No. 8,508,751, dated
`
`2/5/2013
`
`Ex. 1019 Notice of Allowance for U.S. Patent No. 8,508,751, dated 4/18/2013
`
`Ex. 1020 Declaration of Dr. Vijay Madisetti
`
`Ex. 1021 U.S. Patent No. 6,540,415 (“Slatter”)
`
`Ex. 1022
`
`Transcript of September 20, 2018 Deposition of Dr. Jeffrey Rodriguez
`
`Ex. 1023 U.S. Patent Application Publication No. 2009/0002548 (“Liang”)
`
`Ex. 1024 U.S. Patent No. 6,128,006 (“Rosenberg”)
`
`Ex. 1025
`
`Second Declaration of Dr. Vijay Madisetti
`
`
`
`
`ii
`
`
`
`
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`
`Petitioner submits this Sur-Reply in opposition to PO’s MTA (Paper 12)
`
`based on the Board’s Order dated November 30, 2018 (Paper 27).
`
`I.
`
`PO’S FAILED TO MEET ITS MTA BURDEN
`
`PO’s proposed substitute claims are broader in at least some respects than
`
`the claims they replace in violation of 35 U.S.C. §316(d)(3). Relevant here is the
`
`generic concept of “resolution” and the subsidiary concepts of “display resolution”
`
`and “reference resolution,” which are illustrated in the following Venn-diagram.
`
`The genus “resolution” includes various
`
`species, including “reference resolution”
`
`and “display resolution.” Dr. Madisetti
`
`explained that there are circumstances
`
`where a “display resolution” is something
`
`different from a “reference resolution,” meaning that subject matter not previously
`
`captured as a “reference resolution” would nonetheless be captured as a “display
`
`resolution.” (Paper 17, 14-15; Ex. 1025, ¶¶36-46). He provided substantial
`
`testimony about this fact at his deposition (Ex. 2006, 49:23-68:22), including
`
`explaining that “in my opinion, the term ‘display resolution’ is broader than the
`
`‘reference resolution’ because, No. 1, it's different. No. 2, not all display
`
`resolutions are reference resolutions.” (Id., 66:19-22; see also (Ex. 1025, ¶42)). PO
`
`lacks evidentiary rebuttal from an expert or otherwise.
`
`1
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`
`Instead, PO’s only response is argument that “display resolution” is logically
`
`narrower than “reference resolution.” (Paper 19, 5-6). PO’s position is belied by
`
`the fact that it did not claim a “display resolution, wherein the display resolution is
`
`a reference resolution.” By replacing the modifier “reference” with “display,” PO
`
`covered different (though perhaps partially overlapping) claim scope, and created
`
`broader claim that would capture subject matter not previously captured. (See, e.g.,
`
`MPEP 1412.03 (broadening reissue if claim is broader in at least one respect)).2
`
`
`
`Since the Federal Circuit’s 2017 decision in Aqua Products v. Matal, patent
`
`owners have not borne a burden of proving that substitute claims are patentable.
`
`(872 F.3d 1290, 1303 (Fed. Cir. 2017)). However, the Federal Circuit was clear
`
`that “the patent owner must satisfy the Board that the statutory criteria in §
`
`316(d)(1)(a)-(b) and § 316(d)(3) [i.e., that the scope of the claims is not enlarged]
`
`
` 2
`
` Regarding PO’s arguments about indefiniteness (Paper 19, 6-7), neither cited case
`
`stands for the idea that making an indefinite claim definite is per se narrowing. The
`
`paragraph after the quoted paragraph from Western Digital Corp. v. SPEX Tech.
`
`confirms that while correcting indefiniteness may be permissible, “a patent owner
`
`may not seek to broaden a challenged claim in any respect…” (IPR2017-00082,
`
`Paper 13 at 6-7. (PTAB Apr. 25, 2018)). Here, PO seeks to broaden infinitesimally
`
`small scope (Paper 9, 15) to finite scope in violation of 35 U.S.C. §316(d)(3).
`
`2
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`are met.” (Id. at 1305-06). PO has failed to meet this burden.
`
`PO’s MTA also fails to comply with other applicable regulations and
`
`statutes. As the Board’s Paper 27 dissent noted, PO admitted it has failed to
`
`comply with formal requirements for its MTA. (Paper 27, 6-7). More importantly,
`
`the dissent recognized that PO proposed a second, new set of substitute claims in
`
`its Reply. (Id., 7-8). This second set is improper, as it raises new issues (37 C.F.R.
`
`§42.23), replaces non-challenged claims (35 U.S.C. §316(d)(1)(B)) and was filed
`
`without prior authorization (37 C.F.R §42.121(c)). IPR is not an opportunity to
`
`redo the back-and-forth of examination to try to “get it right.” The totality of PO’s
`
`failures to comply with its Aqua Products obligations warrants denial of its MTA.3
`
`II.
`
`PO’S PROPOSED SUBSTITUTE CLAIMS ARE OBVIOUS
`
`PO presents three substantive obviousness arguments: (1) Morichika does
`
`
` 3
`
` The majority characterized PO’s failings as “procedural issues” (see Paper 27, 2-
`
`4), but in fact PO failed to comply, in its moving paper, with the obligations
`
`associated with such motions. Aqua Products, 872 F.3d 1290 at 1306. PO did not
`
`need to amend; it elected to do so and did so incorrectly. The prejudice lies in the
`
`time and pages required to point out PO’s failings, and the fact that if these failings
`
`are overlooked, a motion that should have been denied may be granted, and
`
`amended claims issued, following an examination-like process at the PTAB.
`
`3
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`not rely on video; (2) “Liang merely teaches selecting zoom for the display” and
`
`(3) Rosenberg teaches “zooming functions on views in windows.”4
`
`Morichika generally discloses a system that includes a digital camera 4c
`
`connected to a PC 2 via a USB interface. (Paper 17, 17; Ex. 1002, ¶¶42-46, Fig. 4),
`
`but does not state whether the camera is a digital video camera or a digital still
`
`camera. However, Morichika does describe its applicability in a “real time”
`
`environment. (Paper 17, 17; Ex. 1002, ¶65; Ex. 1025, ¶52; Ex. 2006, 38:14-15
`
`(“Morichika can support video and still cameras.”)). Liang confirms that, as early
`
`as 2007, it was well known that digital video cameras could be used in a look down
`
`document camera to provide a “live display” of what the video camera sees. (Paper
`
`17, 18; Ex. 1023, ¶¶65-78; Ex. 1025, ¶¶53-56; Ex. 2006, 40:5-14). Dr. Madisetti
`
`testified that a POSA would have understood that camera 4c in Morichika would
`
`have been modified or augmented to include the camera and related capabilities
`
`from Liang, and that image processing described in Morichika as being real-time
`
`
` 4
`
` PO’s other arguments (Paper 19 at 7-11) reflect a lack of understanding of KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). In particular Petitioner’s
`
`Opposition (Paper 17, 16-24; Ex. 1025, ¶¶47-110) shows (in the allowed number
`
`of pages--no trivial task) that the “the subject matter as a whole would have been
`
`obvious at the time the invention was made”--the inquiry under KSR. Id. at 399.
`
`4
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`could have been done for each frame of video data. (Paper 17, 18; Ex. 1025, ¶¶53-
`
`56; Ex. 1022, 14:6-13, 16:10-20). Use of a video camera as a source for the image
`
`data Morichika discusses processing is therefore obvious.
`
`Regarding use of a mouse wheel to zoom, Liang inherently discloses (and
`
`thus renders obvious) using mice for zooming. (Paper 17, 19; Ex. 1023, ¶¶33-35;
`
`Ex. 2006, 71:4-7). Specifically, Fig. 19 of Liang “teaches or suggests that there is a
`
`way to provide a user interface device so that the user can click a zoom button that
`
`is displayed on computer 1910 to carry out specific functionality that includes
`
`command such as zoom.” (Ex. 2006, 44:7-11).
`
`This well-known feature is also obvious in view of Rosenberg, which
`
`discloses that “[t]o allow the user easier control of scrolling, zooming, and other
`
`like functions when using a mouse, a ‘scroll wheel’ or ‘mouse wheel’ has been
`
`developed and has become quite common.” (Paper 17, 10 (citing Ex. 1024, 1:65-
`
`2:16)). PO’s demand that Petitioner’s opposition build an allegedly invalidating
`
`system misapplies the standard for obviousness, which is not one of bodily
`
`incorporation. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
`
`Dr. Madisetti confirmed that Rosenberg taught video zoom, such as “in virtual
`
`reality simulations . . . [to] perform functions on a computer.” (Ex. 2006, 48:10-
`
`20). Thus, zooming is obvious in view of Rosenberg. All PO has done is added
`
`well-known elements to its claims; this does not resurrect them from obviousness.
`
`5
`
`
`
`
`
`
`Date: December 11, 2018
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`Respectfully submitted,
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
`
`6
`
`
`
`IPR2017-02108
`U.S. Patent No. 8,508,751
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 11, 2018, a true and correct copy of the
`
`foregoing was caused to be served electronically on the following counsel of
`
`record for Patent Owner at the following email addresses:
`
`Trevor Q. Coddington Ph.D. (trevorcoddington@sandiegoiplaw.com)
`Donny K. Samporna (donnysamporna@sandiegoiplaw.com)
`James K. Fazio III (jamesfazio@sandiegoiplaw.com)
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`K&L GATES LLP
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
