Trials@uspto.gov
`571-272-7822
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`Paper 54
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`Entered: December 18, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
`
`v.
`
`LEGEND3D, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`Paper 54
`
`Entered: December 18, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner,
`
`v.
`
`LEGEND3D, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01243
`Patent 7,907,793 B1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, CARL M. DEFRANCO, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`
`INTRODUCTION
`I.
`Prime Focus Creative Services Canada Inc. (“Petitioner”) sought inter
`partes review of claims 1–20 (the “Challenged Claims”) of U.S. Patent No.
`7,907,793 B1 (Ex. 1001, “the ’793 patent”), owned by Legend3D, Inc.
`(“Patent Owner”). Paper 1 (“Petition” or “Pet.”). On September 23, 2016,
`Patent Owner filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`Upon consideration of the Petition and Preliminary Response, we instituted
`an inter partes review pursuant to 35 U.S.C. § 314 of the Challenged Claims
`on the grounds specified below. Paper 14 (“Decision on Institution” or
`“Dec. on Inst.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Based on the record before us, we determine that Petitioner has shown, by a
`preponderance of the evidence, that claims 1, 2, 7–14, 19, and 20 of the ’793
`patent are unpatentable. Petitioner has failed to show, however, that claims
`3–6 and 15–18 of the ’793 patent are unpatentable. We also deny Patent
`Owner’s Motion to Amend.
`
`
`BACKGROUND
`II.
`Procedural History
`A.
`After institution, Patent Owner requested rehearing of our Decision on
`Institution. Paper 17. We considered Patent Owner’s arguments in support
`of its request and denied Patent Owner’s request pursuant to 37 C.F.R.
`§ 42.71(d) for failure to show that we overlooked or misunderstood any
`argument made by Patent Owner in the Preliminary Response. Paper 30.
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`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 36, “PO Resp.”), and Petitioner filed a Reply thereto (Paper 43,
`“Reply”). Patent Owner also filed a Contingent Motion to Amend the
`Claims (Paper 41, “Motion to Amend”). Petitioner filed an Opposition to
`Patent Owner’s Contingent Motion to Amend the Claims (Paper 44) and
`Patent Owner filed a Reply in Support of the Motion to Amend (Paper 46).
`Both parties requested an oral hearing, and we scheduled the
`requested hearing for September 14, 2017. Paper 51. On September 11,
`2017, Patent Owner notified us that it had “decided to rest on its papers in
`IPR2016-01243 and save the expense of participating in the oral hearing.”
`Ex. 3001, 1–2. The next day, Petitioner confirmed that it wished to continue
`with the oral hearing. Id. at 1. The oral hearing was held as scheduled on
`September 14, 2017, and the record contains a transcript of the hearing
`(Paper 53, “Tr.”). Petitioner presented arguments in support of its Petition
`and against Patent Owner’s Motion to Amend. See generally id. Patent
`Owner did not attend the hearing. Id. at 3:4–7.
`On October 4, 2017, the Court of Appeals for the Federal Circuit
`issued its decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
`2017) (en banc) addressing the burden of proof that the Board applies when
`considering the patentability of substitute claims presented in a motion to
`amend filed under 35 U.S.C. § 316(d). Given Patent Owner’s pending
`Motion to Amend, we requested that the parties inform us whether they
`believed a conference was necessary to discuss what impact, if any, Aqua
`Products has on resolution of Patent Owner’s Motion to Amend. Ex. 3002.
`Neither party responded to our request.
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`Related Proceedings
`B.
`The ’793 patent is the subject of ongoing litigation between the
`parties: Prime Focus Creative Services Canada Inc. v. Legend3D, Inc.,
`Central District of California, Case No. 2:15-cv-2340-MWF-PLA, filed on
`April 21, 2016 (C.D. Cal.) (the “District Court litigation”). Pet. 1. The
`District Court litigation is stayed and administratively closed until resolution
`of the instant inter partes review. Order, Case No. 2:15-cv-02340-MWF-
`PLA, Dkt. No. 62 (filed 05/02/16).
`C. Overview of the ’793 patent (Ex. 1001)
`The ’793 patent relates to an image sequence depth enhancement
`system and method that allows for the rapid conversion of a sequence of
`two-dimensional images into three-dimensional images. Ex. 1001, 1:21–25.
`The ’793 patent describes two tasks: colorizing black-and-white feature
`films (id. at 1:27–65) and converting two-dimensional images to three-
`dimensional images (id. at 1:65–2:16). To perform either of these tasks, the
`’793 patent classifies elements from movie scenes into two separate
`categories: “either background elements (i.e. sets and foreground elements
`that are stationary) or motion elements (e.g., actors, automobiles, etc.) that
`move throughout the scene.” Id. at 2:21–25. In one embodiment, the
`background elements are combined to create a composite background image,
`and colorization or depth information is applied to the background elements.
`Id. at 15:15–25. In another embodiment, the motion elements are masked
`throughout a scene, and colorization or depth information is applied to the
`masked motion elements. Id. at 2:29–3:5.
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`Illustrative Claims
`D.
`Claims 1, 13, and 20 are independent claims. Claims 1 and 13
`are reproduced below.
`1.
`A method for modifying a set of time ordered digital
`images comprising:
`associating a plurality of images comprising common
`background elements;
`obtaining a composite background comprising said
`plurality of images wherein said composite background excludes
`a set of motion objects moving in relation to said common
`background elements;
`setting at least one depth parameter associated with a
`region within said composite background;
`applying said at least one depth parameter to at least one
`image selected from said plurality of images using a computer.
`
`13. A method for modifying a set of time ordered digital
`images comprising:
`associating a first mask with a motion object in a first
`image;
`copying said first mask to create a second mask associated
`so with a second image;
`moving said second mask to a location of said motion
`object in said second image;
`reshaping said second mask to fit said motion object in
`said second image using a computer;
`setting at least one depth parameter associated with said
`first mask;
`applying said at least one depth parameter to said second
`image using said computer.
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`Cited References
`E.
`Petitioner relies on the following references:
`1. Sandrew, U.S. Patent No. 7,181,081 B2 (“the ’081 patent”)
`(Ex. 1003).
`2. Sandrew, U.S. Patent No. 7,333,670 B2 (“the ’670 patent”)
`(Ex. 1004).
`3. Passmore, U.S. Patent App. Pub. No. 2009/0219383 A1, issued
`Sept. 3, 2009 (Ex. 1005, “Passmore”).
`4. Sullivan et al., U.S. Patent No. 7,573,475 B2, issued Aug. 11, 2009
`(Ex. 1006, “Sullivan”).
`Instituted Grounds of Unpatentability
`F.
`We instituted trial based on the following grounds of unpatentability
`under 35 U.S.C. § 103(a) (Dec. on Inst. 16):
`References
`Challenged Claims
`’081 patent and Passmore
`1, 2, and 7–12
`
`’081 patent and Sullivan
`
`1–12
`
`’670 patent and Passmore
`
`13, 14, and 19
`
`’670 patent and Sullivan
`
`13–19
`
`’081 patent, ’670 patent, and
`Passmore
`
`’081 patent, ’670 patent, and
`Sullivan
`
`20
`
`20
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`Testimony
`G.
`Petitioner supports its challenges with a declaration of Dr. David
`Forsyth, filed contemporaneously with the Petition. Ex. 1009. Dr. Forsyth
`testified further by deposition on March 20, 2017, and a transcript of his
`testimony has been entered into evidence. Ex. 2021.
`Patent Owner rebuts Petitioner’s challenges with a declaration of
`Dr. Carlos Vazquez, filed contemporaneously with the Patent Owner
`Response. Ex. 2027. Dr. Vazquez testified further by deposition on May
`22–23, 2017, and a transcript of his testimony has been entered into
`evidence. Ex. 1040.
`
`
`III. ANALYSIS OF PETITIONER’S CHALLENGE
`Principles of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail in its challenges to the Challenged
`Claims, Petitioner must demonstrate by a preponderance of the evidence that
`the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and (4) objective evidence of non-
`obviousness, i.e., secondary considerations such as commercial success, long
`felt but unsolved needs, and failure of others. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). The obviousness inquiry further requires an
`analysis of “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness”)).
`The Level of Ordinary Skill in the Art
`B.
`Based on testimony of its declarant Dr. Forsyth, Petitioner asserts a
`person of ordinary skill in the art “would have had at least a Bachelor’s
`degree education or equivalent and seven or more years of relevant work
`experience in the area of image analysis.” Pet. 18–19 (citing Ex. 1009,
`¶¶ 30–32). Alternatively, Petitioner and Dr. Forsyth assert that “if an
`academic, a person of ordinary skill in the art at the time of the alleged
`invention would have had a Ph.D. in a field related to computer image
`analysis or image enhancement and several years of relevant research.” Id.
`Regardless of the precise formulation of the level of ordinary skill in the art,
`Petitioner argues, the ’793 patent “is so obvious that it does not matter what
`level of ordinary skill in the art is applicable.” Id. at 19.
`Patent Owner, relying on the testimony of its declarant Dr. Vazquez,
`contends that a person of ordinary skill in the art “would have had at least an
`undergraduate degree in electrical engineering or computer science (or an
`equivalent subject) and would have been someone with a good working
`knowledge of computer programming, data structures, and image
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`processing,” which such a person would have gained through several years
`of practical working experience. PO Resp. 1 (citing Ex. 2024 ¶¶ 20–24).
`Patent Owner continues, “a higher level of education or skill might make up
`for less experience, and vice-versa.” Id. (citing Ex. 2024 ¶ 21). Finally, of
`Petitioner’s statement of a higher level of ordinary skill, Patent Owner states,
`“nothing in the record suggests alternative skill levels would lead to a
`different interpretation of the evidence.” Id. at 2.
`Our decision does not turn on the differences between the definitions,
`particularly as Petitioner and Patent Owner agree that their respective
`positions would not change regardless of which formulation is applied.
`Pet. 19; PO Resp. 2. We see no compelling reason to apply the higher level
`of skill advocated by Petitioner. Accordingly, we adopt the formulation
`advocated by Patent Owner as more representative of the level of ordinary
`skill in the art at the time of the invention of the ’793 patent.
`Claim Construction
`C.
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
`interpretation standard, and absent any special definitions, claim terms are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definitions for claim terms or phrases must be set forth with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
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`(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
`be read from the specification into the claims. See In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`The parties’ sole claim construction dispute focuses on the term
`“depth parameter,” as recited in each of independent claims 1, 13, and 20.
`We interpret claim terms to the extent necessary to resolve the controversy
`before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`Accordingly, we construe below the term “depth parameter.” We further
`determine that construction of additional terms is not necessary for our
`analysis and, therefore, do not construe any additional terms. See id.
`Petitioner did not set forth an explicit construction of the term “depth
`parameter” in its Petition. See generally Pet. Instead, in a general overview
`comparing the ’793 patent to the prior art, Petitioner asserted that the term
`“depth parameter” as used in the Challenged Claims “relates to the perceived
`distance of an object from the camera.” Id. at 10. Petitioner’s statement
`mirrored exactly the opinion of Dr. Forsyth, who stated in his declaration
`that “a ‘depth’ parameter relates to the perceived distance of an object from
`the camera.” Ex. 1009 ¶ 39. Although we relied on Dr. Forsyth’s testimony
`in assessing written description support with respect to an earlier priority
`date for the ’793 patent, we did not render an express construction of the
`term “depth parameter.” Dec. on Inst. 8–9.
`In its Reply, Petitioner states: “in the ’793 Patent, ‘depth’ means the
`distance of an object, and a ‘depth parameter’ is just a parameter that
`contains distance information for the object.” Reply 15 (internal citation
`
`10
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`omitted). Petitioner further clarifies that the claimed “depth parameter”
`cannot be “as broad as anything that merely creates a perceived depth.” Id.
`According to Petitioner, a ‘“depth parameter’ in the context of the ’793
`Patent corresponds to three-dimensional positioning of objects in the scene.”
`Id. at 21.
`Relying on its declarant, Dr. Vazquez, Patent Owner contends the
`term “depth parameter” should be construed as “a parameter that provides a
`perceived depth of an object or region in an image.” PO Resp. 3 (citing
`Ex. 2024 ¶ 44). Patent Owner and Dr. Vazquez continue, “[t]he plain and
`ordinary meaning for the term ‘depth parameter’ includes, for example, the
`saturation and luminance parameters of color taught by the ’081 Patent.” Id.
`Patent Owner also recognizes in its Response that Petitioner does not
`advocate for a specific construction of “depth parameter” and that
`Dr. Forsyth proffered a subsequent construction that was wholly absent from
`his declaration and the Petition. Id. at 2–3. Patent Owner counters
`Dr. Forsyth’s proposed construction by arguing that the construction is
`unsupported by record evidence and inadequately explained. Id.
`To determine the scope of the term “depth parameter,” we must look
`to the context provided by the claims themselves, as well as to the
`Specification in whose light they must be considered under the broadest
`reasonable interpretation standard. See Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“the context of the surrounding
`words of the claim also must be considered in determining the ordinary and
`customary meaning of those terms”). More particularly, because the
`disputed term arises in the context of the claims of ’793 patent, we focus our
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`inquiry first on the claims and disclosure of the ’793 patent in particular, as
`opposed to the predecessor ’081 and ’670 patents.
`The ’793 patent is a continuation in part of the ’081 and ’670 patents.
`Ex. 1001, (60). The Specification of the ’793 patent differs from that of the
`’081 and ’670 patents in that the Specification contains a significant amount
`of new matter. See generally Ex. 1014 (comparison of the ’081 and ’793
`written descriptions); Ex. 1015 (comparison of the ’670 and ’793 written
`descriptions). Whereas the matter inherited in the Specification from the
`predecessor patents describes the colorization of black and white images, the
`new matter includes Figures 42 through 70 of the ’793 Patent and describes
`depth enhancement, including the depth enhancement problem to be solved
`and the corresponding solution. See id.; see also Ex. 1001.
`With this new matter added, the Specification of the ’793 patent is
`directed to a system and method of depth enhancement for an image
`sequence. Ex. 1001, 1:21–25. The invention disclosed in the Specification
`allows for rapid conversion of a sequence of two dimensional images into
`three dimensional images. Id. The invention, according to the Specification,
`is capable of being used to achieve depth enhancement (e.g., two-
`dimensional to three-dimensional conversion) and also colorization of black
`and white images. See id. at 2:20–22 (“Embodiments of the invention
`classify scenes to be colorized and/or converted from two-dimensional to
`three-dimensional into movies into two separate categories.”).
`The dual uses of the invention disclosed in the Specification are
`further highlighted by the dual problems the ’793 patent seeks to solve.
`First, the Specification describes prior art colorization systems that require
`the operator to adjust masks frame by frame. Id. at 1:27–1:48. Second, the
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`Specification describes prior art depth enhancement systems that require
`manual shaping of masks “for applying depth or Z-dimension data to the
`objects.” Id. at 1:66–2:16.
`The invention of the ’793 patent categorizes scenes into either
`background elements or motion elements that move through a scene. Id. at
`2:22–25. Motion elements are masked in a key frame by the operator using
`interface tools. Id. at 2:31–33. Once the key frame has been fully masked,
`all mask information is applied to all frames using known mask fitting or
`reshaping techniques, one of which is based on luminance and pattern
`matching. Id. at 2:36–48. The Specification describes that by using these
`“mask reshaping techniques described above for colorization, i.e., using the
`underlying grey-scale for tracking and reshaping masks, much of the labor
`involved with converting a two-dimensional movie to a three-dimensional
`movie is eliminated.” Id. at 31:58–62. This reduction in labor is achieved
`because “once key frames have color or depth information applied to them,
`the mask information can be propagated automatically throughout a
`sequence of frames which eliminates the need to adjust wire frame models.”
`Id. at 31:62–66. Figure 3 of ’793 patent is reproduced below.
`
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`Figure 3 depicts a sample of motion objects (“M-Object”) 18a-c as M-
`Object 18 moves through a scene. Id. at 15:59–64. Key M-Objects 18a and
`18c are “assigned a depth” of 32 feet and 28 feet, respectively, “from the
`camera capture.” Id. at 16:5–8. The various depths of M-Object 18 as it
`moves through the scene, such as for subsequent M-Object 18b, may be
`“tweened” between these assigned depths in order to allow for realistic
`three-dimensional motion without the need for wire frame models. Id. at
`16:9–13.
`Alternatively, the Specification describes that background and motion
`elements can be combined into single frame representations of multiple
`frames. Id. at 2:49–56. These single frame representations then serve as a
`visual reference database for the computer controlled application of masks
`within a sequence of multiple frames. Id. This alternative includes
`calculation of the X, Y, and Z coordinates for the frames and use of
`grayscale to determine the location, shape, color information, and depth
`information of the masks applied. Id. at 2:56–3:5.
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`The Specification further describes the creation of a single composite
`background image representing a series of camera pan images. Id. at 3:7–
`12. “For depth conversion projects, (i.e., two-dimensional to three-
`dimensional movie conversion for example), the single background image
`representing the series of camera pan images is utilized to set depths of the
`various items in the background.” Id. at 3:21–25. According to the
`Specification, once depth information is set for the background items, the
`invention can automatically spread the depth information to individual
`frames, thus requiring depth to be set only once per scene instead of once per
`frame. Id. at 3:26–32.
`Figure 50, cropped and reproduced below, “shows a control panel for
`the creation of three dimensional images, including the association of layers
`and three-dimensional objects to masks within an image frame.” Id. at
`32:44–48.
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`The reproduced portion of the control panel in Figure 50 depicts an
`area designated as “Layer Depth,” wherein a user may assign a Z-dimension
`or depth. See id. at 32:48–58. In particular, the “Translate Z” rotation
`quantity shown in Figure 50 indicates that the object is rotated forward. Id.
`In scenes where there is minor camera movement, the Specification
`discloses masking motion objects using the foregoing techniques, and
`creating a single image for all frames that represents both the static
`foreground elements and background elements. Id. at3:43–51. The
`Specification continues:
`For depth projects, the distance from the camera to each
`item in the composite frame is automatically transferred
`to all the frames that were used to create the single
`composited image. By shifting masked background
`objects horizontally more or less, there[sic] precise depth
`is thus set in a secondary viewpoint frame that corresponds
`to each frame in the scene.
`
`Id. at 4:9–14 (emphasis added). After assigning depths to objects in the
`composite background, a stereoscopic view of the movie is generated by
`creating a second viewpoint for each image in a scene. Id. at 4:23–27. For
`instance, where original frames were assigned a right eye view point, a left
`eye viewpoint is created. Id.
`The Specification uses the term “depth parameter” only once beyond
`the language of the claims and does so in describing creation of a
`stereoscopic view. Id. at 34:43–48. Figure 69 of the ’793 patent is
`reproduced below.
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`Figure 69 “shows an anaglyph of the final depth enhanced second and
`last image frame viewable with Red/Blue 3-D glasses, note rotation of
`person’s head, movement of person’s hand and movement of crystal ball.”
`Id. at 34:36–39. In this figure, the “original two-dimensional image is now
`shown in three-dimensions” by “applying depth information to the masks in
`this subsequent frame from an image sequence.” Id. at 34:39–43. The
`Specification refers to this application of depth information as “the
`operations for applying the depth parameter to a subsequent frame.” Id. at
`34:43–48.
`Against the backdrop of this written description, the independent
`Challenged Claims recite setting at least one “depth parameter” associated
`with a region of a composite background, motion object, mask, or non-
`composited image. Id. at 34:66–67, 36:3–4, 36:33–37. Dependent claims 2
`and 14 add that setting a depth parameter may include assigning a depth
`value, which claim 14 further recites as encompassing numeric values. Id. at
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`35:4–6, 36:7–9. Dependent claims 3–6 and 15–18 recite that setting a depth
`parameter may include selecting, translating, rotating, and changing the size
`of a “three-dimensional geometric depth shape.” Id. at 35:7–23, 36:9–21.
`Finally, dependent claims 7 and 19 disclose that setting a depth parameter
`may include associating a transparency mask with a background element and
`“assigning depth” to the mask. Id. at 35:24–27, 36:22–25. Thus, the
`Challenged Claims describe that depth parameters encompass “depth
`values,” which include numeric values, and can be set for a background, an
`image, and a motion object. A depth parameter can be associated with a
`three-dimensional geometric depth shape.
`Having considered the parties’ positions in light of the full trial
`record, we construe the term “depth parameter” to mean “information that
`relates to the distance of an object from the camera.” The foregoing intrinsic
`evidence instructs that “depth parameter” must encompass numeric values
`for depth and must be capable of being associated with a three-dimensional
`geometric shape. Id. at 35:4–27, 36:7–25. Further, the Specification
`describes depth and Z dimension data as “depth information.” See, e.g., id.
`at 2:7–15. Depth information, as described in the ’793 patent, includes
`specific depths assigned to objects (e.g. “a depth of 32 feet”) and “the
`distance from the camera to each item in the composite frame.” Id. at 16:5–
`8, 4:9–11. The Specification discloses that depth assignment is
`“accomplished via assigning depths, assigning geometric shapes, entry of
`numeric values with respect to objects in the single composite frame. In this
`way creatively selected colors/depths are applied that are appropriate for
`mapping to the range of gray scale/depth underlying each mask.” Id. at
`
`18
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`29:50–56. It is this depth information that the ’793 patent refers to as a
`“depth parameter.” Id. at 34:43–48.
`In light of the foregoing intrinsic evidence, we do not agree with
`Patent Owner’s arguments that the plain and ordinary meaning of the term
`“depth parameter” includes saturation and luminance. PO Resp. 3 (citing
`Ex. 2024 ¶ 44). Patent Owner and Dr. Vaquez do not offer evidence
`intrinsic to the ’793 patent in support of their position. See id. Nor do
`Patent Owner and Dr. Vaquez address the intrinsic evidence discussed
`above. Id. Instead, Patent Owner and Dr. Vaquez address only extrinsic
`evidence, including the ’081 and ’670 patents. Id. at 3–15. Our inquiry on
`claim construction, however, focuses on the specification in which the
`claims appear. See Cuozzo Speed Techs., 136 S. Ct. at 2144–46; Vitronics
`Corp., 90 F.3d at 1582.
`Further, we find the intrinsic evidence is contrary to Patent Owner’s
`arguments. The ’793 patent does not describe saturation or luminance as
`depth information. Rather, the Specification discusses saturation and
`luminance in the context of color. Ex 1001, 30:27–30 (“The standard color
`wheel detects the underlying grayscale range and restricts the designer to
`choose only from those color saturations that will match the grayscale
`luminance underlying the mask.”); 11:27–32 (“Using an input device such as
`a mouse, the designer masks features in a selected single frame containing a
`plurality of pixels and assigns color to them using an HSL color space model
`based on creative considerations and the grayscale and luminance
`distribution underlying each mask.”).1 Significantly, the only mention in the
`
`
`1 According to Dr. Vazquez, the acronym HSL stands for Hue, Saturation,
`and either Luminance or, sometimes, Lightness. Ex. 2024, ¶ 37.
`
`19
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`Specification of the HSL model to which Patent Owner cites describes
`assigning color to masks using an HSL color space model, whereas
`assigning depth entails assigning “objects particular depths including
`contour depths, e.g., geometric shapes such as an ellipsoid to a face.”
`Compare id. at 11:29–30, with id. at 11:50–53. The Specification also
`distinguishes between color and depth information. See, e.g., id. at 3:1–3
`(“corresponding color lookup from frame to frame for colorization projects
`or depth information for two-dimensional to three-dimensional conversion
`projects”) (emphasis added). Contrary to Patent Owner’s position, the
`Specification discloses using colorization mask reshaping techniques, such
`as reliance on underlying greyscale, to propagate depth information once it
`has been applied, not as depth information itself. Id. at 31:58–66.
`For the foregoing reasons, we find Patent Owner’s extrinsic evidence,
`including the testimony of Dr. Vazquez, is insufficient to overcome the
`intrinsic evidence discussed above in order to establish that the plain and
`ordinary meaning of “depth parameter,” as used in the ’793 patent,
`encompasses saturation and luminance.
`We similarly disagree with Patent Owner and Dr. Vazquez’s assertion
`that the claimed “depth parameter” encompasses “a parameter that provides
`a perceived depth.” PO Resp. 3 (citing Ex. 2024 ¶ 44). Patent Owner offers
`no evidence from the ’793 patent in support of this assertion. See id.
`Further, Patent Owner’s argument is predicated on the assertion that “the use
`of saturation and luminance to create perceived depth was well known in the
`art.” Id. As discussed above, we do not find in the Specification support for
`the notion that saturation and luminance constitute “depth parameters” as
`that term is used in the ’793 patent, and thus do not agree with Patent
`
`20
`
`
`
`IPR2016-01243
`Patent 7,907,793 B1
`
`Owner’s proposed construction that the claimed “depth parameter”
`encompasses “a parameter that provides a perceived depth.”
`D. Overview of the ’670 and ’081 Patents
`Both Sandrew patents upon which Petitioner relies are parents of the
`’793 patent, the instant challenged patent. Specifically, the ’793 patent is a
`continuation-in-part of U.S. Patent No. 7,577,312, which is a continuation of
`the ’670 patent, which is a divisional of the ’081 patent. Both the ’081 and
`’670 patents provide for colorizing black-and-white feature films by
`classifying elements from movie scenes into two separate categories: “either
`background elements (i.e. sets and foreground elements that are stationary)
`or motion elements (e.g., actors, automobiles, etc.) that move throughout the
`scene.” Ex. 1003, 1:57–59; Ex. 1004, 1:64–66. In an embodiment of the
`’081 patent, the background elements are combined to create a composite
`background image, and the single background image is colorized. Ex. 1003,
`2:16–68. In an embodiment of the ’670 patent, the motion elements are
`masked throughout a scene, and colorization is applied to the masked motion
`elements. Ex. 1004, 2:3–45.
`The ’081 and ’670 Patents as Prior Art to the ’793 Patent
`E.
`Petitioner’s unpatentability arguments in this case rely heavily on the
`’793 patent’s predecessors, the ’081 and ’670 patents. Exs. 1003, 1004. For
`example, Petitioner relies on the ’081 and ’670 patents as teaching or
`suggesting every limitation of the challenged independent claims but for the
`claimed “depth parameter.” Pet. 19–21, 34–36, 39–43, 46–47, 49–52.
`A central question in this case is whether the ’081 and ’670 patents
`can serve as prior art in an obviousness analysis of the Challenged Claims.
`Patent Owner devotes the majority of i
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