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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`GOPRO, INC.
`Petitioner
`
`v.
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`CONTOUR IP HOLDING LLC,
`Patent Owner.
`
`_____________________
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`Case No. IPR2015-01078
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`United States Patent No. 8,896,694 B2
`_____________________
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`Before JUSTIN T. ARBES, NEIL T. POWELL, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
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`PETITIONER’S SUPPLEMENTAL PAPER ON RELEVANCE OF
`DISTRICT COURT CLAIM CONSTRUCTION DECISION
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`
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`IPR2015-01078
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`During the February 4, 2019 teleconference with the Board, counsel for
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`Patent Owner asserted that the district court’s claim construction order is relevant
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`in this proceeding for a limited purpose. (Ex. 1040, 10:3-20). Patent Owner’s
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`counsel asserted that GoPro argued to the Board that there is no word “parallel” in
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`the challenged claims, but the district court construed certain claims to require this
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`limitation. Id.
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`
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`Patent Owner seeks to manufacture inconsistency where there is none.
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`GoPro has consistently argued that Boland teaches generation of high-resolution
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`and low-resolution video data from the video image data in parallel. (Paper 1, 35-
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`36 (explaining that Boland discloses “multiple, parallel video streams”); IPR2015-
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`01080, Paper 38, 14 (explaining that Boland teaches generating “different
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`qualities/resolutions from the video image data at the same time in parallel, not in
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`serial as Patent Owner asserts”)). At oral argument in these proceedings, counsel
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`for GoPro clarified that the claims do not require parallel processors, nor do the
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`claims require parallel processing solely or directly from the image sensor as
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`Patent Owner maintained. (Paper 53, 23:4-24:6, 26:23-27:25, 78:11-80:18).
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`
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`The district court’s construction of the “generate” and “generating” terms
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`that appear in claims 1, 3, and 11 in the ’694 patent (Ex. 2016, 9:15-13:28) in no
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`way undermines GoPro’s arguments in front of the Board or the disclosure of
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`Boland. While the district court construed the claims to require generation of two
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`1
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`video streams in parallel, consistent with GoPro’s arguments to the Board, no
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`IPR2015-01078
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`requirement for the high resolution and low resolution video streams to be
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`generated solely or directly from the image sensor using parallel processors was
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`added. (Id., 9:23-11:21).
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`Thus, even if the district court’s claim construction applied in this
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`proceeding, Boland teaches the “generating” element, because it discloses high
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`resolution and low resolution video data generated in parallel. (Paper 1, 35-36;
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`IPR2015-01080, Paper 38, 14). Thus, the district court’s claim construction order
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`is irrelevant to the obviousness issues before the Board on remand, and Patent
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`Owner’s argument to the contrary should be rejected.
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`Respectfully submitted,
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`/s/ Adam R. Brausa
`Adam R. Brausa (Reg. No. 60,287)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`Tel: 415-376-6420
`Fax: 415-236-6300
`
`
`
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`Dated: February 22, 2019
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`2
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`IPR2015-01078
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`CERTIFICATE OF SERVICE
`I hereby certify that on February 22, 2019, a copy of PETITIONER’S
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`SUPPLEMENTAL PAPER ON RELEVANCE OF DISTRICT COURT
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`CLAIM CONSTRUCTION DECISION PURSUANT TO 37 C.F.R. §
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`42.8(a)(3) was served by filing this document through the PTAB’s E2E Filing
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`System as well as delivering a copy via electronic mail upon the following:
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`For PATENT OWNER:
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`Andrew R. Sommer
`John R. Keville
`WINSTON & STRAWN LLP
`asommer@winston.com
`jkeville@winston.com
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`Nicole M. Jantzi
`Ian B. Brooks
`Paul M. Schoenhard
`McDERMOTT WILL & EMERY LLP
`njantzi@mwe.com
`ibrooks@mwe.com
`pschoenhard@mwe.com
`
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`Dated: February 22, 2019
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`By:
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`
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`3
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`/s/ Adam R. Brausa
`Adam R. Brausa (Reg. No. 60,287)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`Tel: 415-376-6420
`Fax: 415-236-6300
`
`
`
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