`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`VEDANTI SYSTEMS LIMITED,1
`Patent Owner.
`____________
`
`Case IPR2016-002122
`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.
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`TABLE OF CONTENTS
`
`The Amendments Add Terms Whose Plain Meanings Are Easily
`
`Petitioner’s Obviousness Section Misstates Patent Owner’s
`
`TABLE OF AUTHORITIES .................................................................................. ii
`I.
`Understood and Are Supported by the Original Application......................... 1
`II.
`The Proposed Substitute Claims are Definite ............................................... 4
`III.
`Arguments .................................................................................................... 5
`IV. 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.
`and Shin Do Not Render the Claims Obvious..................................... 8
`a Non-Predetermined Set of Pixel Data from Each Region ......................... 10
`A.
`Predetermined Set of Pixel Data from Each Region ......................... 10
`B.
`is Flawed .......................................................................................... 10
`
`Petitioner Incorrectly Argues that the Art of Record Teaches Selecting
`
`
`
`V.
`
`Petitioner’s Asserted Combinations of Spriggs, Golin/Keith,
`
`Spriggs Fails to Teach or Suggest Selecting a Non-
`
`Petitioner’s Asserted Combination of Spriggs and Golin/Keith
`
`i
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`35 U.S.C. § 103 ...................................................................................................... 5
`
`Statutes
`Other Authorities
`
`MPEP ........................................................................................................... 3, 4, 11
`
`ii
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
` 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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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 ‘non-
`
`predetermined’ 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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`“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 “non-
`
`predetermined” 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 non-
`
`predetermined 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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`Spriggs Fails to Teach or Suggest Selecting a Non-Predetermined
`A.
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`
`
`
`
`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
`
`
`
`Case No. IPR2016-00212
`Patent Owner’s Reply in Support of Its Contingent Motion to Amend
`
`
`
`
`
`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