UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE INC., Petitioner, v. VEDANTI SYSTEMS LIMITED, 1 Patent Owner. Case IPR2016-00212 2 U.S. Patent No. 7,974,339 B2 PATENT OWNER S REPLY IN SUPPORT OF ITS CONTINGENT MOTION TO AMEND 1 Vedanti Systems Limited has assigned the patent to the current patent owner, Vedanti Licensing Limited. 2 Case IPR2016-00215 has been consolidated with this proceeding.
TABLE OF CONTENTS TABLE OF AUTHORITIES... ii I. The Amendments Add Terms Whose Plain Meanings Are Easily Understood and Are Supported by the Original Application... 1 II. The Proposed Substitute Claims are Definite... 4 III. IV. Petitioner s Obviousness Section Misstates Patent Owner s Arguments... 5 Petitioner s Arguments that Substitute Claims 14 and 15 Are Unpatentable Is Based on Misreadings of the Prior Art... 7 A. Spriggs Fails to Teach or Suggest Different Aspect Ratios... 7 B. Petitioner s Asserted Combinations of Spriggs, Golin/Keith, and Shin Do Not Render the Claims Obvious... 8 V. Petitioner Incorrectly Argues that the Art of Record Teaches Selecting a Non-Predetermined Set of Pixel Data from Each Region... 10 A. Spriggs Fails to Teach or Suggest Selecting a Non- Predetermined Set of Pixel Data from Each Region... 10 B. Petitioner s Asserted Combination of Spriggs and Golin/Keith is Flawed... 10 i
TABLE OF AUTHORITIES Cases Corning Optical Commc ns RF, LLC v. PPC Broadband, Inc., IPR2014-00441 (PTAB Oct. 30, 2014)... 1 Eiselstein v. Frank, 52 F.3d 1035 (Fed. Cir. 1995)... 2 Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013)... 6 In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)... 11 In re Johnson, 558 F.2d 1008 (C.C.P.A. 1977)... 4 In re Nuvasive, Inc., No. 2015-1670, 2016 WL 7118526 (Fed. Cir. Dec. 7, 2016)... 9 Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015... 4 Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir. 2003)... 3 MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15, 2015)... 6 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)... 3 Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012)... 4 Statutes 35 U.S.C. 103... 5 Other Authorities MPEP... 3, 4, 11 ii
This Reply responds to Petitioner s Opposition to Patent Owner s Contingent Motion to Amend. I. The Amendments Add Terms Whose Plain Meanings Are Easily Understood and Are Supported by the Original Application Petitioner wrongly argues that Vedanti s Motion should be denied because a proper claim construction was not provided. (Opp. at 5.) A claim construction may be required when the meaning of a new term in a proposed substitute claim reasonably can be anticipated as subject to dispute. See Corning Optical Commc ns RF, LLC v. PPC Broadband, Inc., IPR2014-00441, at 4 (PTAB Oct. 30, 2014) (Paper 19). Petitioner fails to point out any truly reasonable disputes and instead manufactures them. Aspect ratio is well-understood: it is a width to height ratio of the number of pixels in a region. As the Patent Owner pointed out in its motion to amend, Figure 10 of the applications discloses regions that can be (7 x 3), (5 x 6), (5 x 4), (7 x 7), (2 x 3), (2 x 7), (Exs. 1002 and 1018 at 67 and Fig. 10), which results in aspect ratios of 7x3, 5x6, 5x4, 1x1, 2x3, and 2x7. This confirmed that the Patent Owner interprets aspect ratio in accordance with its ordinary meaning. This same specification support also provides written description and enablement support. Contrary to Petitioner s belief, (Opp. at 5 8), the specification does not need to use the precise words of the claim to satisfy section 112. Eiselstein v. Frank, 52 F.3d 1
1035, 1038 (Fed. Cir. 1995) ( [T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims.... ). Petitioner also contends that the specification merely discloses matrices of pixel data having different sizes, and that [d]ifferent size does not require different aspect ratios. (Opp. at 6.) Petitioner ignores, however, that Figure 10 discloses five regions having different aspect ratios of (7 x 3), (5 x 6), (5 x 4), (7 x 7), (2 x 3), (2 x 7). (Exs. 1002 and 1018 at 67 and Fig. 10.) Petitioner s argument that this example does not isolate two different aspect ratios as such is confusing: Figure 10 isolates five different regions having five different aspect ratios, which is an unambiguous disclosure of the at least two regions having different aspect ratios limitation. As to non-predetermined, Petitioner admits that the ordinary meaning of the term is not determined beforehand. (Opp. at 9 ( The scope of nonpredetermined could refer to not known ahead of time based on its ordinary meaning.... (emphasis added); the ordinary meaning of nonpredetermined [] signifies something not already determined before a selection event occurs. ).) Petitioner also concedes that the random pixel selection embodiment is an example of the non-predetermined limitation. (Id.) Petitioner attempts to sow confusion, however, by arguing that it could be construed as limited to this 2
random pixel selection example. But limiting an otherwise broad term to the preferred embodiment is improper under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), and certainly under the BRI standard. Finally, Petitioner s admission that the random selection embodiment in the specification is an example of non-predetermined is fatal to its written description and enablement arguments. Petitioner s characterization of non-predetermined as a negative limitation is immaterial. (Opp. at 7.) As an initial matter, it is unclear whether nonpredetermined is a negative limitation because it does not preclude predetermined selections from also being made. 3 But even if the term was a negative limitation, Petitioner admits that a negative limitation can have proper written description support where the disclosure specif[ies] alternatives where applicable, and that here, the specification does, in fact, disclose alternatives to non-predetermined 3 The proposal is an open-ended comprising claim that requires selecting a nonpredetermined set of pixel data ; it does not exclude systems that also include selecting a predetermined set of pixel data. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003); see also MPEP 2111.03. 3
pixel selections. (Id.) Indeed, Petitioner correctly explains that in addition to disclosing an example of non-predetermined pixel selection ( random selection ), the patent s original specification discloses several predetermined pixel selections. (Id.) Because alternative elements are positively recited in the specification, they may be excluded in the claims. See Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356 57 (Fed. Cir. 2015) ( We hold that [Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)] did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of 112, paragraph 1 for negative claim limitations. ); In re Johnson, 558 F.2d 1008, 1019 (C.C.P.A. 1977) ( [T]he written description... supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining. ); see also MPEP 2173.05(i) ( If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. ). II. The Proposed Substitute Claims are Definite Petitioner argues that proposed dependent claim 15 is indefinite because it is not possible for dependent claim 15 to require[] a frame to have both uniform and non-uniform matrix size data at the same time. (Opp. at 8.) Petitioner 4
misinterprets the claims. Claim 14 requires at least two regions having different aspect ratios (emphasis added). It does not require that all of the regions have different aspect ratios. And claim 15 does not require that all of the matrix size data that is transmitted be uniform matrix size data. Some of the regions can have different aspect ratios, and some of the regions can have the same aspect ratios as well as being of uniform size. Indeed, the specification discloses that matrix size system 204 can generate both uniform and nonsymmetrical matrix dimensional data, such as NxM dimensions where N and M are integers that are not equivalent. (Exs. 1002 and 1018 at 33 (emphasis added).) Figure 10 (and accompanying text) discloses that these NxM dimensions can vary within a frame. Claims 14 and 15 are consistent with this disclosure. Further, as discussed above, Petitioner clearly understands that the ordinary meaning of non-predetermined is not known ahead of time. (Opp. at 9 10.) Petitioner creates confusion where there is none by suggesting contrary to Federal Circuit law that non-predetermined could reasonably be limited to the disclosed random selection of pixel data example in the specification. III. Petitioner s Obviousness Section Misstates Patent Owner s Arguments Signaling weakness, Petitioner begins its 35 U.S.C. 103 section by wrongly accusing Patent Owner of misleading the Board. Petitioner claims that 5
Vedanti ignores prior art such as Golin and Keith that teach the newly added claim language. (Opp. at 11.) But Vedanti s motion directly addressed these references. (Mot. at 6 8, 11, 22.) Petitioner then accuses Vedanti of mischaracteriz[ing] Golin and Keith as teaching non-uniform aspect ratios rather than different aspect ratios. (Opp. at 11 12 (citation omitted).) The argument is perplexing because two regions with non-uniform aspect ratios have different aspect ratios ( different is an antonym of uniform ). Petitioner improperly implicates Patent Owner s duty of candor. (Opp. at 13.) But Patent Owner s motion extensively describes a large number of prior art references, focusing primarily on art Google raised in this IPR and in a foreign proceeding (as well as other art). Google does not explain why any of the additional references previously cited to the Examiner during the initial prosecution are material. Petitioner fully met its obligations by grouping these less material references and explaining that none included the proposed amended language. See Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, at 7 (PTAB June 11, 2013) (Paper 26) (informative); MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, at 2 3 (PTAB July 15, 2015) (Paper 42). 6
IV. Petitioner s Arguments that Substitute Claims 14 and 15 Are Unpatentable Is Based on Misreadings of the Prior Art A. Spriggs Fails to Teach or Suggest Different Aspect Ratios Petitioner mistakenly states that Spriggs vertices define at least two regions having different aspect ratios. (Opp. at 14; id. at 1 2 ( Vedanti overlooks teachings of blocks with different aspect ratios in Spriggs ). Rather, Spriggs expressly subdivides a block into four subblocks having the same aspect ratio, not a non-uniform aspect ratio. (See Ex. 1005, at Figs. 2 3, 6; 3:5 7 ( The block is sub-divided into four by cutting it in half horizontally and vertically. ); 3:21 23 ( If it has to be sub-divided it is removed from the stack and replaced by the four new blocks. ); 3:44 46 ( Alternatively, data may be regarded as associated with the act of dividing a block into four.... ).) Petitioner further points to the rectangles defined by FBIG versus JLCH or EPJR as disclosures of the new different aspect ratio limitation. (Opp. at 14.) But the purported region JLCH is actually two separate regions JNCM and NLMH, which Spriggs generates through the quadtree decomposition of region EICH. Similarly, the purported region EPJR is actually two separate regions EPOS and OSJR which Spriggs generates through the quadtree decomposition of region EKJN. Those separate regions JNCM, NLMH, EPOS, and OSJR have the same aspect ratios as one another and as FBIG. These regions not Petitioner s creation 7
of a new and undisclosed region formed by adding separate regions together do not meet the different aspect ratios new claim language. B. Petitioner s Asserted Combinations of Spriggs, Golin/Keith, and Shin Do Not Render the Claims Obvious Attempting to cure these deficiencies in Spriggs with respect to Patent Owner s proposed claim language wherein the optimized matrix data defines at least two regions having different aspect ratios, Petitioner asserts a flawed combination of Spriggs and Golin or Keith. Petitioner points to case law instructing that an obviousness inquiry requires a flexible approach, (Opp. at 17), and claims to have provided rationales set out above for why a POSA would have been motivated to combine the teachings, (Opp. at 18). But a flexible approach does not allow for the creation of a motivation to combine through conclusory evidence and by ignoring evidence suggesting that the combination should not be made. Indeed, the Federal Circuit recently identified some insufficient articulations of motivation to combine and clarified that (i) conclusory statements alone are insufficient and, instead, the finding must be supported by a reasoned explanation, (ii) it is not adequate to summarize and reject arguments without explaining why the PTAB accepts the prevailing argument, and (iii) although reliance on common sense may be appropriate in some circumstances, the PTAB cannot rely solely on common knowledge or 8
common sense to support its findings. In re Nuvasive, Inc., No. 2015-1670, 2016 WL 7118526, at *6 8 (Fed. Cir. Dec. 7, 2016). In its opposition, Petitioner incorrectly states, A POSA... would have seen Golin s binary tree divisions as a simple substitution for Spriggs division codes, with a predictable result. (Opp. at 15.) Rather, a POSA at best would have seen Golin s adjacent pixel variation roughness test as a substitution for Sprigg s interpolation-type roughness test, not Sprigg s division codes. (See Mot. at 7 8). Likewise, Petitioner asserts an impermissible combination of Spriggs in view of Golin or Keith and further in view of the new reference Shin. Petitioner argues that Shin expressly teaches combining Golin s splits resulting in different aspect ratios with Spriggs division codes (0, 1). (Opp. at 21 (citation omitted).) Petitioner further argues, without support, The [Shin and Spriggs] references themselves suggest their combination because Spriggs teaches selecting pixel data in regions to reduce the amount of pixel data needing to be transmitted. (Opp. at 24.) However, a POSA would have had no reason to apply the non-uniform aspect ratios disclosed by Shin in Spriggs. The nonuniform aspect ratios require additional bits to describe the different actions no need for split or split to normal, horizontal, or vertical quad (GOOG 1034, Figs. 5A 5B) whereas Spriggs merely requires a 0 or 1 to describe split or no split. Thus, when 9
the objective is to reduce data, non-uniform aspect ratios would increase the necessary division code data. V. Petitioner Incorrectly Argues that the Art of Record Teaches Selecting a Non-Predetermined Set of Pixel Data from Each Region A. Spriggs Fails to Teach or Suggest Selecting a Non-Predetermined Set of Pixel Data from Each Region Petitioner incorrectly contends that [b]ecause [Spriggs] divides and subdivides each frame and region, it is not possible for the pixels to always be predetermined. (Opp. at 19.) This argument overlooks the context of the proposed amendment: selecting a non-predetermined set of pixel data from each region (emphasis added). Although Spriggs teaches that the arrangement of the regions and sub-regions within a frame may change and thus the set of pixels selected from the frame may change, the set of pixels selected from each region within the frame is always the four corner pixels of the region and thus is always predetermined. (See Ex. 2003 at 97:10 14; Mot. at 20 ( With respect to any given region that is created, the transmitted pixels for that region are always the four corner pixels according to Spriggs. ). Indeed, Petitioner concedes that Spriggs teaches selecting the same center pixel values for each subregion. (Opp. at 19.) B. Petitioner s Asserted Combination of Spriggs and Golin/Keith is Flawed Attempting to cure these deficiencies in Spriggs with respect to Patent 10
Owner s proposed claim language selecting a non-predetermined set of pixel data from each region, Petitioner asserts yet another impermissible combination of Spriggs and Golin or Keith. Petitioner alleges that Golin also provides motivation... to use random selection instead of predetermined selection and [t]hus, even if non-predetermined means random, the Spriggs-Golin combination would have suggested to a POSA random pixel selection from each region. (Opp. at 19 20.) However, Golin discloses random pixel selection for performing a mean square difference calculation, (Ex. 1006 at 27:41 68), and thus cannot be combined with Spriggs which requires corner pixels to define each region and perform an interpolation calculation. Indeed, Spriggs could not determine the addresses of pixels or regions using the random pixel selection technique disclosed in Golin. Cf. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) (holding that the claimed combination cannot render a reference unsatisfactory for its intended purpose); MPEP 2143.01 ( If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. ). 11
Respectfully submitted, Dated: December 20, 2016 By: /Robert M. Asher, #30,445/ Robert M. Asher Registration No. 30,445 Sunstein Kann Murphy & Timbers LLP 125 Summer Street Boston, MA 02110 Tel: (617) 443-9292 Fax: (617) 443-0004 rasher@sunsteinlaw.com Counsel for Patent Owner, Vedanti Licensing Limited 12
CERTIFICATE OF SERVICE The undersigned hereby certifies that a copy of the foregoing PATENT OWNER S REPLY IN SUPPORT OF ITS CONTINGENT MOTION TO AMEND was served on December 20, 2016, by filing this document through the PTAB E2E System as well as delivering a copy via electronic mail directed to the attorneys of record for the Petitioner at the following address: Michael V. Messinger Michell K. Holoubek Brian W. Lee Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, NW Washington, DC 20005-3934 mikem-ptab@skgf.com mholoubek-ptab@skgf.com blee-ptab@skgf.com PTAB@skgf.com Dated: December 20, 2016 By: /Robert M. Asher, #30,445/ Robert M. Asher Registration No. 30,445 Sunstein Kann Murphy & Timbers LLP 125 Summer Street Boston, MA 02110 Tel: (617) 443-9292 Fax: (617) 443-0004 rasher@sunsteinlaw.com Counsel for Patent Owner, Vedanti Licensing Limited