`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-00449
`Patent 8,924,506 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Paper 31
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`February 10, 2017
`_____________
`
`
`
`

`

`C.
`
`
`TABLE OF CONTENTS
`
`UPDATED EXHIBIT LIST .................................................................................... II
`I.
`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`“Limited Bandwidth Communications Channel” ................................ 1
`B.
`“Limited Communication Bandwidth Computer Device” ................... 2
`II. ALL CLAIM ELEMENTS ARE TAUGHT OR SUGGESTED BY
`REDDY IN VIEW OF HORNBACKER ....................................................... 3
`A.
`“Limited Bandwidth” Elements ........................................................... 3
`B.
`“Said processor operative to select said defined data parcel…
`and render said defined data parcel… for a progressive
`resolution enhancement” ...................................................................... 6
`“Queuing the update data parcels on the remote computer based
`on an importance of the update data parcel as determined by the
`remote computer” ................................................................................. 8
`D. Data Structure Arguments .................................................................... 9
`III. A POSITA WOULD COMBINE REDDY AND HORNBACKER ............ 16
`A.
`Reddy and Hornbacker are Analogous art ......................................... 16
`B.
`Reddy Does not Teach Away from the Claimed Solutions ............... 17
`C.
`Reddy Encourages Use of its Teachings on a Device with
`Limited Bandwidth ............................................................................. 18
`Bradium Fails to Show that Reddy and Hornbacker are
`Incompatible ....................................................................................... 19
`IV. NO SECONDARY INDICIA OF NON-OBVIOUSNESS .......................... 20
`A. No Long-Felt Need ............................................................................. 20
`B. No Nexus and No Evidence of Praise, Licenses, or Commercial
`Success ............................................................................................... 22
`1.
`Purported awards: .................................................................... 24
`2.
`Purported Licenses and Funding Agreements: ........................ 24
`3.
`Navi2Go: .................................................................................. 25
`4.
`3DVU / Microsoft (Ex. 2013 at 2, Ex. 2015) preliminary
`discussions: .............................................................................. 25
`Conclusion regarding Secondary Considerations .................... 26
`
`D.
`
`5.
`
`- -
`
`

`

`
`TABLE OF CONTENTS
`
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 26
`V.
`VI. CONCLUSION ............................................................................................. 26
`
`
`
`
`
`-i-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`
`UPDATED EXHIBIT LIST
`
`Ex. 1001 U.S. Patent No. 7,908,343 B2 to Levanon et al. (“the 343 Patent”)
`
`Ex. 1002 U.S. Patent No. 8,924, 506 B2 to Levanon et al. (“the 506 Patent”)
`
`Ex. 1003
`
`PCT Publication No. WO 99/41675 to Cecil V. Hornbacker, III
`(“Hornbacker”)
`
`Ex. 1004 Reddy et al., “TerraVision II: Visualizing Massive Terrain Databases
`in VRML,” IEEE Computer Graphics and Applications March/April
`1999, pp. 30-38 (“Reddy” with added paragraph numbers by
`Petitioner for ease of reference in the Petition)
`
`Ex. 1005 Declaration of Prof. William R. Michalson (“Michalson Decl.”) with
`Appendices
`
`Ex. 1006
`
`EP1070290 to Cecil V. Hornbacker, III
`
`Ex. 1007
`
`Printout of IEEE Explore citations to Reddy et al. (Ex. 1004)
`
`Ex. 1008 Printout of Google Scholar citations to Reddy et al. (Ex. 1004)
`
`Ex. 1009 Cover page and authenticating declaration of Reddy et al. (Ex. 1004)
`from British Library
`
`Ex. 1010 Cover page of Reddy et al. (Ex. 1004) from Linda Hall Library
`
`Ex. 1011
`
`Proof of Service dated Jan. 12, 2015 in Case No. 15-cv-00031-RGA,
`Bradium Technologies, LLC v. Microsoft Corp.
`
`Ex. 1012 Affidavit of Matthew C. Bernstein in Support of Petitioner's Motion
`for Pro Hac Vice Admission
`
`Ex. 1013 Affidavit of Evan S. Day in Support of Petitioner's Motion for Pro
`Hac Vice Admission
`
`LinkedIn Page for Isaac Levanon
`
`Ex. 1014
`
`
`
`-ii-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`IEEE 802.11a1999, Wikipedia, available at
`
`
`
`https://en.wikipedia.org/w/index.php?title=IEEE_802.11a-
`
`1999&oldid=740398108
`
`Ex. 1015
`
`
`
`
`
`
`Ex. 1016 Declaration of Prof. William R. Michalson in Support of Petitioner's
`Reply to Patent Owner's Response
`
`Ex. 1017 Declaration of Yonatan Lavi, with Exhibits A-F
`
`Ex. 1018 Deposition Transcript of Peggy Agouris, dated January 13, 2017
`
`Ex. 1019 Deposition Transcript of Isaac Levanon, dated January 18, 2017
`
`Ex. 1020
`
`Fujitsu Technical Reference Guide, Stylistic 2300, Copyright 1998
`
`Ex. 1021 Not Used in This Proceeding
`
`Ex. 1022
`
`The Universal Grid System, NGA Office of GEOINT Sciences,
`March 2007
`
`Ex. 1023 Wolford, B., FXT1: 3dfx Texture Compression, Last Updated
`September 14, 1999, available at http://web.archive.org/web/
`20000114134331/http://www.combatsim.com/htm/sept99/3dfx-
`tc1.htm
`
`Ex. 1024 U.S. Patent Publication No. 2008/0294332 A1 to Levanon et al.
`
`Ex. 1025 U.S. Patent No. 7,561,156 B2 to Levanon et al.
`
`Ex. 1026
`
`Excerpt of Initial Claim Chart, Bradium Techs. LLC v. Microsoft
`Corporation, No. 15-cv-31-RGA (D. Del)
`
`Ex. 1027 Bing Maps Preview App for Windows in the Window Store, available
`at http://web.archive.org/web/20140101045325/http:/apps.microsoft.
`com/windows/en-us/app/bing-maps-preview/75ce2a6a-8a25-4916-
`83d0-19b8e7b60787
`
`Ex. 1028 Windows 8 and 8.1 System Requirements, available at
`https://support.microsoft.com/en-us/help/12660/windows-8-system-
`requirements
`
`-iii-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`Ex. 1029 Home and Home Office Computing, Compaq, available at
`http://web.archive.org/web/20000304135335/http://athome.compaq.co
`m/store/default.asp?cpqsid=0TGMCU2GPSSH2GAH00AKHBU1A1
`EDBHWB.
`
`Ex. 1030 Barclay, T. et al., Microsoft TerraServer: A Spatial Data Warehouse,
`Microsoft Research, June 1999.
`
`Ex. 1031
`
`Intel Microprocessor Quick Reference Guide - Product Family,
`available at http://www.intel.com/pressroom/kits/quickreffam.htm
`
`
`
`-iv-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`Microsoft’s Petition established by a preponderance of evidence that the
`
`claims would be obvious to a person of ordinary skill in the art (POSITA). For the
`
`reasons set forth below, Bradium fails to rebut Microsoft’s showing.
`
`I.
`
`CLAIM CONSTRUCTION
`
`Microsoft proposes that “bandwidth” means just that—bandwidth. It
`
`doesn’t mean the physical type of channel (wired or wireless), the processing
`
`power of the processor, the form factor, or the purpose of the device utilizing that
`
`channel. Accordingly, “limited bandwidth communications channel” and “limited
`
`communication bandwidth computer device” require no further construction. Ex.
`
`1016, ¶¶ 14-30.
`
`“Limited Bandwidth Communications Channel”
`
`A.
`Bradium’s construction of “channel” is vague and unhelpful. Both parties’
`
`experts agree that “narrowband” is simply another way to say “limited bandwidth.”
`
`Ex. 1016, ¶ 18; Ex. 1018 at 36:13-39:8. The specification does not say that limited
`
`bandwidth communications channels must be wireless, just that wireless conditions
`
`may result in limited bandwidth. Ex. 1002, 3:12-14; Ex. 1016, ¶¶ 19-20.
`
`Bradium disregards a statement in the ‘506 Patent that high concurrent user
`
`load can cause an otherwise high bandwidth communications channel to be
`
`“limited.” Ex. 1002, 3:14-19. Dr. Michalson explains that Bradium’s distinction
`
`between limited bandwidth “channels” and “conditions” (Response at 9-14) is
`
`-1-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`irrelevant from the perspective of the client device, and a POSITA would
`
`recognize that the same design considerations apply. Ex. 1016, ¶¶ 21-23. Inventor
`
`Levanon admits that limited bandwidth channels “can be limited by the amount of
`
`users.” Ex. 1019 at 40:18-41:10. A channel therefore may also be limited
`
`bandwidth due to concurrent user load. Ex. 1016, ¶¶ 17-25.
`
`“Limited Communication Bandwidth Computer Device”
`
`B.
`Neither the claim language nor specification supports Bradium’s attempt to
`
`redefine this term to mean the processing power or size of the device. The ‘506
`
`Patent describes alleged problems with the computational requirements of prior art
`
`image transmission methods (Ex. 1002, 2:42-3:11) as a separate problem from
`
`limited network bandwidths. Id., 3:7-31. Likewise, the specification identifies a
`
`need for a system that can do two distinct things: (1) “support small client
`
`systems… and [(2)] efficiently utilize low to very low bandwidth network
`
`connections.” Id., 3:32-36. Therefore, a POSITA would not conflate the
`
`processing power or size of the device with bandwidth. Ex. 1016, ¶¶ 26-30.
`
`Bradium’s “small client” redefinition is unsupported, does not clarify the claims,
`
`and has nothing to do with the claim language. Id.
`
`The co-inventor, Yonatan Lavi, further testifies that the early prototype
`
`alleged by Levanon to embody the claimed invention (Ex. 2004, ¶¶ 25-31) ran on a
`
`standard desktop computer utilizing a dial-up internet connection and would not
`
`-2-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`have satisfied Bradium’s proposed construction. Ex. 1017, ¶ 16; see also Ex. 2020
`
`at 1. Meanwhile, in concurrent litigation, Bradium contradicts its current “small
`
`client” construction by accusing software which requires more advanced
`
`capabilities by any measure than a conventional desktop PC at the time of the
`
`alleged invention. Ex. 1016, ¶ 30; Ex. 1026, Ex. 1027, Ex. 1028.
`
`Because Bradium’s proposed construction is not the BRI and is contradicted
`
`by the evidence, the Board should construe this term according to its plain and
`
`ordinary meaning.
`
`II. ALL CLAIM ELEMENTS ARE TAUGHT OR SUGGESTED BY
`REDDY IN VIEW OF HORNBACKER
`A.
`As previously explained, the “bandwidth” elements of the challenged claims
`
`“Limited Bandwidth” Elements
`
`(“limited bandwidth communications channel” in independent claims 8 and 15, and
`
`“limited communication bandwidth computer device” in independent claims 1 and
`
`15) are taught by both Reddy and Hornbacker. Paper 1 at 26-29, 47-50, 54-57.
`
`Bradium does not dispute that Hornbacker teaches these elements, but ignores
`
`teachings in Reddy to use geographic image viewing functionality described
`
`therein in situations such as military applications or disaster response scenarios.
`
`Ex. 1004, ¶ 48. These teachings would suggest to a POSITA to access the
`
`geographic data of Reddy in bandwidth-limited situations. Ex. 1016, ¶¶ 42-43.
`
`Even using Bradium’s erroneous distinction between limited bandwidth “channels”
`
`-3-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`and “conditions,” a POSITA would recognize the scenarios taught in Reddy would
`
`frequently encounter limited bandwidth channels under Bradium’s restrictive
`
`definition, and the need for mobility in such scenarios would suggest using
`
`portable devices such as laptop computers, PDAs, etc. Ex. 1016, ¶¶ 46-48.
`
`Bradium’s “limited communication bandwidth computer device” arguments
`
`depend on its flawed construction, and do not respond to the Petition’s showing
`
`that this element is taught according to its plain and ordinary meaning. The Board
`
`already rejected Bradium’s remaining arguments directed solely to Reddy (Paper 9
`
`at 23-29) as discussed below.
`
`Bradium does not address the teachings of Reddy as a whole, only separate
`
`teachings of preferred embodiments. Bradium asserts that one embodiment of
`
`Reddy’s teachings, the TerraVision II software, could operate on a graphics
`
`workstation connected to a high-speed ATM network, while a “standard VRML
`
`browser on a laptop machine” is a separate embodiment. Response at 25-29; Ex.
`
`1004, ¶ 48.
`
`Prior art references must be read not just for the features of preferred
`
`embodiments, but for the full scope of what is taught or suggested to a POSITA.
`
`The question is not whether a particular software embodiment taught by Reddy
`
`(e.g. TerraVision II) would run on a particular device or under particular
`
`conditions, but whether it would be obvious to a POSITA in view of Reddy’s
`
`-4-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`teachings to implement the claimed features using a limited bandwidth channel or
`
`device. Dr. Michalson explains that a POSITA would be motivated by Reddy’s
`
`teachings of resource-constrained situations to implement the full range of Reddy’s
`
`teachings on mobile devices and with limited bandwidth. Ex. 1016, ¶¶ 32-40, 42-
`
`56.
`
`Bradium argues that features of TerraVision II would not be viable on a
`
`VRML browser operating on a laptop or other mobile device, yet cites contrary
`
`evidence. Bradium cites pp. 4-5 of Ex. 2066, an April 1999 SRI webpage
`
`describing various ways that the geographic data could be accessed, as “contrasting
`
`TerraVision running on fast graphics workstation with accessing the data only via
`
`a standard browser.” Response at 24. Yet this exhibit states it is “feasible” that the
`
`features provided by TerraVision “could be implemented for a standard VRML
`
`browser through the use of various Java scripts embedded in the scene, or running
`
`externally to the browser.” Ex. 2066 at 4. Ex. 2066 further discusses the authors’
`
`desire to extend TerraVision functionality to “commercial, off-the-shelf” software
`
`(id. at 1), enable “open solutions” for a “wide cross-section of users” and integrate
`
`VRML support “directly with Internet browser software” (id. at 2-3). Even if the
`
`Board only considers TerraVision II, Dr. Michalson explains that the
`
`corresponding code, which Bradium references in its Response at p. 5, could
`
`operate on a range of computer devices, including mobile devices. Ex. 1016, ¶¶
`
`-5-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`50-54. Accordingly, Reddy does not teach away from using all features relevant to
`
`the claims on a limited communications bandwidth computer device. Id.
`
`Moreover, a POSITA would recognize that even operations on a high-bandwidth
`
`network could be constrained to limited bandwidth by concurrent user load. Id., ¶
`
`43. As to claims 4, 11 and 18, Dr. Michalson explains that a POSITA would
`
`understand that both laptops (“mobile computing devices”) and tablets (“PDAs” or
`
`“palm-top computers”) existed in 1999 that were fully capable of hosting software
`
`with the functionality taught by Reddy. Ex. 1020; Ex. 1016, ¶¶ 52-54.
`
`These claim elements are therefore obvious to a POSITA over the teachings
`
`of Reddy and Hornbacker as a whole.1
`
`B.
`
`“Said processor operative to select said defined data parcel… and
`render said defined data parcel… for a progressive resolution
`enhancement”
`
`Bradium’s Response (pp. 29-32) incorrectly paraphrases claims 8 and 15’s
`
`“processor” elements, which require a processor to select a defined data parcel and
`
`render that data parcel to provide for progressive resolution enhancement. The
`
`claim language does not link selecting a data parcel with progressive resolution
`
`enhancement in the manner argued by Bradium. Reddy, however, meets this claim
`
`element even under Bradium’s interpretation because it teaches that the processor
`
`
`1 The Board did not “misread” Reddy in its Institution Decision. Ex. 1016, ¶ 56.
`
`-6-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`selects data parcels (tiles) as it loads the appropriate tiles in a coarse-to-fine
`
`manner. Ex. 1004, ¶ 44; Ex. 1016, ¶ 58.
`
`Bradium argues that Reddy teaches requesting tiles based on user
`
`movements using a “fixed” algorithm. Response at 30. Nothing in the claims
`
`excludes the processor selecting data parcels based on user actions; indeed, claim
`
`16 in the related ‘343 Patent requires this. Ex. 1001 at 14:1-6. Bradium’s “fixed”
`
`algorithm arguments are incorrect because a processor inherently must execute
`
`instructions in an algorithm in order to operate. Ex. 1016, ¶ 60.
`
`Bradium further argues “TerraVision’s use of available low resolution data
`
`if higher-resolution data has not yet arrived over the network” doesn’t meet the
`
`claim element. Response at 31. The claim, however, only requires selection of
`
`one data parcel (“said data parcel”) and rendering that parcel to provide for
`
`progressive resolution enhancement, which Reddy teaches under the BRI of the
`
`claim whenever any given tile is loaded and displayed to replace a portion of a
`
`lower-resolution tile. Bradium further ignores Reddy’s teaching to use the
`
`progressive coarse-to-fine algorithm to “load and display” new data, which a
`
`POSITA understands means downloading tiles at a series of resolutions to provide
`
`progressive resolution enhancement, even under a restrictive claim interpretation.
`
`Ex. 1004, ¶ 44; Ex. 1016, ¶¶ 57-60.
`
`-7-
`
`

`

`C.
`
`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`“Queuing the update data parcels on the remote computer based
`on an importance of the update data parcel as determined by the
`remote computer”
`
`Bradium’s argument that the queuing of data parcels based on importance,
`
`as recited in Claims 6, 13, and 20, is absent from Hornbacker and Reddy, is based
`
`on an erroneous claim interpretation. These dependent claims further define the
`
`“processing the source image data” recited in base claims 1, 8 and 15 respectively.
`
`Such “processing” is performed “to obtain a series K1-N of derivative images of
`
`progressively lower image resolution.” Therefore, claims 6, 13, and 20 simply
`
`recite that, when processing to obtain lower resolution images, the remote
`
`computer queues data parcels based on an importance determined by the remote
`
`computer. Nothing in the claims ties queuing to retrieval of data parcels.
`
`Bradium argues “Hornbacker does not disclose prioritization of retrieval of
`
`tiles at all.” Response, p. 41. Bradium further argues “the “pre-computation” of
`
`view tiles of Hornbacker does not teach or suggest queuing of view tiles.”
`
`Response, p. 42.
`
`As the Petition explains (pp. 43-44), Hornbacker teaches that a server “pre-
`
`compute[s] view tiles that may be required by the next view request.” Ex. 1003,
`
`7:26-8:6. As Dr. Michalson previously explained (to which neither Bradium nor
`
`its expert responds), queues are ubiquitous data structures in computer science and
`
`the concept of queueing data parcels (or packets) in a particular order is inherent to
`
`-8-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`any data processing system. Data parcels must be processed in an order specified
`
`by rules, and therefore a POSITA would expect an operation requiring a processor
`
`to perform computations on data parcels to queue parcels according to the
`
`importance of which functions are performed first. Ex. 1005, ¶¶ 171-73. Reddy
`
`further teaches that “TerraVision attempts to predict user’s future moves by a
`
`simple extrapolation of their current flight path” and then “pre-fetches” tiles so
`
`they are immediately available.” Ex. 1004, ¶ 46. As the Petition explained, a
`
`POSITA would recognize that Hornbacker and Reddy share the goal of
`
`anticipating tiles that may be needed by the user, and utilizing the server to predict
`
`and queue which tiles may be needed (as taught by Hornbacker) would be an
`
`obvious modification to the system of Reddy to achieve the same goal, with
`
`predictable results. Ex. 1016, ¶¶ 112-119.
`
`D. Data Structure Arguments
`Bradium and its expert ignore the “image pyramid” shown in Fig. 1 of
`
`Reddy (Paper 1 at 18, 21-22, 33-36, 44), which shows an array or “image pyramid”
`
`of derivative tiles, each of which is unique to a particular location and resolution
`
`level, just like Fig. 2 of the ‘506 Patent:
`
`-9-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`
`
`
`
`
`Dr. Michalson explains that such structures were well-known for 20 years
`
`before the alleged invention date, and that it would be obvious to a POSITA that
`
`two-dimensional coordinates and a level of detail (LOD) are required to identify a
`
`specific tile. Ex. 1016, ¶¶ 70-77, 79-80.
`
`Bradium admits (Response at 35) that Reddy teaches that image textures
`
`(including map images) are specified by URLs containing the image’s coordinates,
`
`-10-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`which are specific for “a given image, geographical area, and LOD.” (Ex. 1004, ¶¶
`
`18, 22-23.) Bradium also does not address Microsoft’s analysis that in view of
`
`Reddy’s teachings that such tiles are (1) specific to a particular location and LOD
`
`and (2) located by URLs, that it would be obvious to locate tiles using URLs
`
`specifying their location and LOD. Ex. 1005, ¶¶ 138-145, 177-80.
`
`Since it cannot seriously dispute that Reddy teaches a system comprising
`
`tiles stored in arrays based on coordinates and LOD, Bradium instead obfuscates
`
`the issue by pointing to various additional features of Reddy.
`
`Bradium argues that Reddy does not teach the claimed data structure
`
`because in its preferred embodiment, tiles are linked by nodes. (Response at 33-
`
`34, 41.) But the ‘506 Patent’s claims are written in “comprising” format and do
`
`not specify how a data parcel must be located other than including the x, y
`
`coordinates and resolution. Nothing in the claims excludes utilizing quad-tree
`
`nodes to locate a tile at a particular location and resolution, which is how the ‘506
`
`Patent’s own preferred embodiment operates. Ex. 1002, 7:27-33, 8:40-43, 9:55-
`
`10:22; Ex. 1016, ¶¶ 95-98. Reddy’s Fig. 3 illustrates how arrays of terrain tiles
`
`including texture data (e.g. the map imagery shown in Fig. 1) relate to geotile
`
`structures so that the geotiles can be used to locate specific terrain tiles:
`
`-11-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`
`
`
`Nor do the claims of the ’506 Patent exclude the use of two-dimensional
`
`imagery combined with other data, such as a polygon mesh to depict elevation
`
`data. Bradium also argues the system of Reddy might hypothetically incorporate
`
`additional types of data that may occupy more than one X, Y coordinate, such as a
`
`cliff. (Response at 35-36.) Although the claims do not even exclude this scenario
`
`because the claim language only requires X, Y coordinates and does not exclude
`
`additional (e.g. Z) values, Reddy teaches displaying textures such as satellite
`
`imagery and aerial photography, which a POSITA would recognize as unique to
`
`particular coordinates. Ex. 1004, ¶¶ 3, 15-17, 22, Fig. 1; Ex. 1016, ¶¶ 40, 99-102.
`
`Therefore, while Reddy teaches some additional features, the simple claimed
`
`image pyramid data structure is taught or suggested to a POSITA by Reddy.
`
`Bradium’s argument that Reddy teaches an embodiment with a geocentric
`
`coordinate system ignores that Reddy teaches incorporating imagery from a wide
`
`-12-
`
`

`

`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`variety of sources and coordinate systems, including systems such as Universal
`
`Transverse Mercator (UTM) which include an “X, Y” component, and uses local
`
`coordinate systems usable to locate imagery tiles by position and LOD. Ex. 1004,
`
`¶¶ 27, 29, p. 31 sidebar, p. 35 sidebar; Ex. 1022; Ex. 1016, ¶¶ 84-94.
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`Bradium argues that Reddy’s coordinate system does not practice the claims
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`because it is not “conformal” or “cylindrical.” Response at 34. These words
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`appear nowhere in the ‘506 Patent, but are based instead based on Microsoft
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`accused products, violating the principle that claims cannot be construed “in light
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`of the accused device.” SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
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`1118 (Fed. Cir. 1985). Even if the claims required a “conformal” or “cylindrical”
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`coordinate system, Reddy teaches coordinate systems such as UTM meeting this
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`definition. The Board previously rejected similar arguments. Paper 9 at 31-32;
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`Ex. 1016, ¶¶ 81-93.
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`Bradium’s assertion that Dr. Michalson interprets the claims to cover “any
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`file in any configuration” (Response at 37) is incorrect and ignores Dr.
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`Michalson’s actual statement (Ex. 1005, ¶ 177), that the tiles can meet the claim
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`element if each tile is stored in a separate file having the required configuration,
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`which Bradium does not dispute. The later paragraphs (Ex. 1005, ¶¶ 178-85)
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`explain in detail why the claimed file configuration is obvious over Reddy and
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`further obvious in view of Hornbacker and the knowledge of a POSITA.
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`Microsoft previously explained that storing a hierarchy of images within a
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`single file would have been well-known to a POSITA even under Bradium’s
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`restrictive construction. Paper 1 at 47, Ex. 1005, ¶¶ 181-85. Bradium responds
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`only with conclusory statements, e.g. “a POSA would understand [FlashPix] to be
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`a different and incompatible approach than the tile system of Hornbacker,”
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`supported only by identically-worded portions of Bradium’s expert declaration.
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`Bradium also relies on one specific example of the use of TIFF image files for
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`facsimile documents, while ignoring Dr. Michalson’s explanation that the related
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`GeoTIFF format was capable of storing geographic information and a POSITA
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`exercising ordinary creativity would recognize that the teachings of storing sub-
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`images in a file would be one of a finite number of known methods to store an
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`“image pyramid,” with predictable results. Ex. 1005, ¶¶ 181-85; Ex. 1005 App.
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`GG. Therefore, while Bradium does not take a position whether all “image
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`parcels” must be stored in the same file or can be separate individual files, it has
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`not rebutted Microsoft’s showing that doing so would be obvious. Ex. 1016, ¶¶
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`104-105.
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`Bradium’s efforts to distinguish Hornbacker’s teachings from this claim
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`element also fail. Ex. 1016, ¶¶ 41, 106-109. Bradium argues Hornbacker does not
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`create a “series of derivative images” because an embodiment of Hornbacker
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`creates tiles “upon request” (Response at 38), yet nothing in the claims precludes
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`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`processing tiles on demand, which Claim 2 specifically requires. Bradium further
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`attempts to distinguish Hornbacker based on optional embodiments that “may be
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`encoded” in the view tile name, e.g. rotation angle (Ex. 1003, 9:20-28), but
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`mischaracterizes such embodiments as limitations of Hornbacker’s teachings.
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`Bradium ignores that Hornbacker also discloses embodiments in which no rotation
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`angle (etc.) is used (id. at 8:30-9:19). Bradium also suggests that Hornbacker’s file
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`structure doesn’t satisfy the claim element because the TILE_NUMBER (which
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`Bradium admits includes X and Y coordinates) also includes tile width, yet the
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`alleged 3DVU prototype (Ex. 2004, ¶¶ 25-30) also required a similar TileSize
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`variable. Ex. 1017, ¶¶ 7-10; Ex. 2020 at 20. Nothing in the claims or the Board’s
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`constructions requires the KD, X, Y, values to be “integers,” a word which appears
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`nowhere in the specification and is an effort by Bradium to require a preferred
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`embodiment rather than the BRI. Nor does the BRI of the claims exclude
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`combining the KD, X, and Y into a single “tile number” as described by
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`Hornbacker, and Bradium itself asserts that the tile system described in Ex. 2059-
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`which combines X and Y values into a single “quadkey” value without a separate
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`resolution index- embodies the claims. Response at 33-34; Ex. 1016, ¶ 110; Ex.
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`2059 at 4-6:
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`Petitioner's Reply to Patent Owner’s Response, Paper 31
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`
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`Finally, the named inventors did not even design the ‘506 Patent’s preferred
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`file structure- their prototype used a pre-existing file format others developed. Ex.
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`2020 at 7; Ex. 1016, ¶ 111; Ex. 1017, ¶¶ 11-12; Ex. 1023. The data structure claim
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`elements were well known to a POSITA and would have been obvious in view of
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`Reddy and Hornbacker. Ex. 1016, ¶¶ 70-111.
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`III. A POSITA WOULD COMBINE REDDY AND HORNBACKER
`A. Reddy and Hornbacker are Analogous art
`The Petition explained at length why Reddy and Hornbacker are analogous
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`art (Paper 1 at 22-26). Bradium argues a POSITA would not consider the
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`combination because Hornbacker’s preferred embodiment transmits documents.
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`Response at 2, 20. 44. But both the GIS and document fields can include
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`transmission of large-scale raster images (e.g. satellite imagery or pictures of large
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`documents), and it is the overlap, rather than hypothetical differences, that is
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`relevant to a POSITA in order to determine whether to adopt teachings from one
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`reference to another. Bradium and its expert ignore that the TIFF file format (well
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`known for storing documents) was adapted for GIS as the GeoTIFF format. Paper
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`1 at 7-8; Ex. 1005, ¶¶ 81-84; Ex. 1005 Apps. GG, HH; Ex. 1016, ¶¶ 120-122.
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`B. Reddy Does not Teach Away from the Claimed Solutions
`Bradium’s “teaching away” arguments misstate and misapply the law. “A
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`reference may be said to teach away when a person of ordinary skill, upon reading
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`the reference, would be discouraged from following the path set out in the
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`reference, or would be led in a direction divergent from the path that was taken by
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`the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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`1314, 1327 (Fed. Cir. 2009) (emphasis added) (quotations omitted). Bradium does
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`not, however, argue that Reddy itself teaches away from progressive resolution
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`enhancement, only that other, unrelated references suggest possible inefficiencies
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`associated with “using multiple, smaller images at different resolutions to serve
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`image and map data” and suggest alternatives. However, the “mere disclosure of
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`more than one alternative” does not teach away, nor does a known feature such as
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`using image pyramids “become patentable simply because it has been described as
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`somewhat inferior to some other product for the same use.” SightSound Techs.,
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`LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015); In re Mouttet, 686 F.3d
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`1322, 1334 (Fed. Cir. 2012). Reddy itself specifically teaches a preferred
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`PTAB Case No. IPR2016-00449, Patent No. 8,924,506 B2
`Petitioner's Reply to Patent Owner’s Response, Paper 31
`embodiment using multiple, smaller images at different resolutions to serve map
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`data, and a POSITA reading Reddy would not ignore that preferred embodiment.
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`Ex. 1004, ¶¶ 3, 15-17, 20, 42, 44, Figs. 1-3; Ex. 1016, ¶¶ 123-127.
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`C. Reddy Encourages Use of its Teachings on a Device with Limited
`Bandwidth
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`Bradium’s argument that Reddy teaches away from a limited
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`communications bandwidth computer device likewise relies not on Reddy itself,
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`but on a di