Filed on behalf of: Unified Patents Inc.
`By: P. Andrew Riley
`Yoonhee Kim
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4000
`E–mail:
`andrew.riley@finnegan.com
`
`
`
`
`
`
`
`
`
`
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Telephone: 202-805-8931
`E–mail:
`jonathan@unifiedpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`JOHN L. BERMAN,
`Patent Owner
`____________
`
`
`
`U.S. Patent No. 5,523,791
`Method and Apparatus for Applying Overlay Images
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 5,523,791
`
`
`

`
`
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES ........................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ............................................................................ 2
`
`Related Matters ...................................................................................... 2
`
`Lead and Back-Up Counsel, and Service Information ......................... 3
`
`III. FEE PAYMENT ............................................................................................ 3
`
`IV. GROUNDS FOR STANDING ...................................................................... 3
`
`V.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................... 4
`
`VI. THE ’791 PATENT ....................................................................................... 4
`
`A. Overview of the Disclosure ................................................................... 4
`
`B.
`
`Prosecution History ............................................................................... 5
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED ................................................................. 6
`
`A.
`
`B.
`
`C.
`
`Claims for Which Review is Requested ................................................ 6
`
`Statutory Grounds of Challenge ............................................................ 6
`
`Claim Construction ............................................................................... 7
`
`1.
`
`
`2.
`
`
`3.
`
`
`4.
`
`
`5.
`
`
`“video input means” (claims 2 and 3) ......................................... 8
`
`“synchronization means” (claims 2 and 3) ................................. 8
`
`“viewer input means” (claim 2) and “operator input
`means” (claims 2 and 3) .............................................................. 8
`
`“processor means” (claims 2 and 3) ........................................... 9
`
`“first memory means” (claims 2 and 3) ...................................... 9
`
`ii
`
`

`
`6.
`
`
`7.
`
`
`8.
`
`
`9.
`
`
`10.
`
`
`11.
`
`
`12.
`
`
`13.
`
`
`14.
`
`
`15.
`
`
`“address generator means” (claims 2 and 3) ............................... 9
`
`“video output means” (claims 2 and 3) ....................................... 9
`
`“second memory means” (claim 3) ........................................... 10
`
`“first switching means” (claim 4) ............................................. 11
`
`“second switching means” (claim 5) ........................................ 11
`
`“video input means” (claim 9) .................................................. 11
`
`“synchronization means” (claim 9) ........................................... 11
`
`“operator input means” (claim 9) .............................................. 12
`
`“video output means” (claim 9) ................................................ 12
`
`“predetermined pattern” (claims 9 and 16) ............................... 12
`
`VIII. CLAIMS 2–16 OF THE ’791 PATENT ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103(a) ......................................................................... 13
`
`A.
`
`B.
`
`Russell is Prior Art Under 35 U.S.C. § 102(b) .................................... 13
`
`Intel User’s Manual is Prior Art Under 35 U.S.C. § 102(b) ............... 13
`
`C. Marlton is Prior Art Under 35 U.S.C. § 102(e) .................................. 13
`
`D. Ground 1: Russell alone or in view of Intel User’s Manual
`renders claim 2 obvious ....................................................................... 13
`
`1.
`
`
`2.
`
`
`3.
`
`
`video input means, for receiving a video signal
`corresponding to said background video image ....................... 14
`
`synchronization means, coupled to said video input
`means, for generating synchronization signals from said
`background video signal ........................................................... 15
`
`viewer input means, comprising selection means for
`receiving an input command from a viewer to select an
`overlay image and position input means for receiving a
`position input from a viewer and generating a position
`signal to position an image on a display ................................... 15
`
`iii
`
`

`
`4.
`
`
`5.
`
`
`6.
`
`
`7.
`
`
`processor means, coupled to said operator input means,
`for receiving said input command and generating overlay
`image data ................................................................................. 17
`
`first memory means, coupled to said processor means, for
`storing said overlay image data................................................. 18
`
`addressor generator means, coupled to said memory
`means, said processor means and said synchronization
`means for selectively generating memory addresses for
`said memory means in response to said processor means
`and in synchronization with said synchronization means......... 19
`
`video output means, coupled to said memory means, for
`selectively reading the overlay image data from said
`memory means in synchronization with said
`synchronization means and merging said overlay image
`with said background video image ........................................... 22
`
`E.
`
`Ground 2: Russell alone or in view of Intel User’s Manual
`renders claims 3–8 and 10–15 obvious ............................................... 33
`
`1.
`
`
`2.
`
`
`3.
`
`
`4.
`
`
`second memory means, coupled to said processor means,
`for storing a plurality of overlay image data representing
`a plurality of overlay images (claim 3) ..................................... 34
`
`wherein said operator input means receives an input
`command from an operator to select an overlay image
`from said plurality of overlay images and said processor
`means receives selected overlay image data
`corresponding to a selected image from said
`secondmemory means and stores the selected overlay
`image data in said first memory means (claim 3) and the
`step thereof (claim 10) .............................................................. 35
`
`first switching means, selectively actuatable by an
`operator, for generating a signal to sequentially display
`each of said plurality of overlay images when actuated
`(claim 4) and the step thereof (claim 11) .................................. 37
`
`second switching means, selectively actuatable by an
`operator, for generating a signal to select a displayed
`
`iv
`
`

`
`5.
`
`
`6.
`
`
`overlay image as a selected overlay image (claim 5) and
`the step thereof (claim 12) ........................................................ 37
`
`a start latch, coupled to said processor means and said
`address generating means, for storing a start address from
`said processor such that said address generating means
`selectively generates memory addresses for said memory
`means from said start address (claim 6) and the step
`thereof (claim 13) ...................................................................... 37
`
`wherein said processor means receives said position
`signal from said operator input means, and changes said
`start address in said start latch such that the selected
`image will overlay said background image in a position
`corresponding to said position signal (claim 7) and the
`step thereof (claim 14) .............................................................. 38
`
`F.
`
`Ground 3: Russell in view of Marlton renders claims 9 and 16
`obvious ................................................................................................ 42
`
`1.
`
`
`2.
`
`
`3.
`
`
`4.
`
`
`video input means for receiving a video signal
`corresponding to said video image ........................................... 43
`
`synchronization means, coupled to said video input
`means, for separating vertical and horizontal
`synchronization signals from said video signal and
`generating horizontal and vertical synchronizing pulses .......... 43
`
`operator input means, for receiving an input command
`from an operator for selecting a normal or distorted
`image ......................................................................................... 44
`
`video output means, coupled to said operator input means
`and said synchronization means, for selectively applying,
`in response to said input command and a predetermined
`pattern, said horizontal synchronizing signals and said
`horizontal synchronizing pulses to each horizontal line of
`said video signal and outputting a distorted video signal
`for generating a distorted video image ..................................... 45
`
`IX. CONCLUSION ............................................................................................ 55
`
`v
`
`

`
`LIST OF EXHIBITS
`
`EX1003 U.S. Patent No. 4,855,813 to Russell et al. “Russell”
`
`EX1004 Intel 82786 Graphics Coprocessor User’s Manual (1988) (“Intel
`
`EX1002 Declaration of Thomas A. Gafford
`
`Description
`Exhibit
`EX100l U.S. Patent No. 5,523,791 to John L. Berman
`
`User ’s Manual”
`
`vi
`
`

`
`
`
`I.
`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`
`INTRODUCTION
`Petitioner Unified Patents Inc. (“Unified”) requests Inter Partes Review
`
`(“IPR”) of claims 2–16 of U.S. Patent No. 5,523,791 (“the ’791 patent”) assigned
`
`to John L. Berman (“Berman”) (EX1001).
`
`The ’791 patent, which has a filing date of October 12, 1993, discloses
`
`methods and apparatuses for placing images over standard video. EX1001 at 1:6–7.
`
`The ’791 patent suggests that it enables a standard television viewer to express
`
`opinions or make jokes by letting the viewer place static images over video. Id. at
`
`1:34–36, 1:42–48.
`
`But technologies for selecting images from a video source and selectively
`
`merging those images onto an external display were well-known in the art prior to
`
`the effective filing date of the ’791 patent. Indeed, the practice of “inserting an
`
`overlay image onto a background video image” on devices such as a television,
`
`video and television games, video systems, TV synchronization, and remote
`
`control was known. Id. at 1:7–9.
`
`Years before the ’791 patent’s filing date, a number of prior art patents and
`
`printed publications disclosed the claimed combination of elements. See EX1002 at
`
`¶¶ 23–25. And even the ’791 patent itself concedes explicitly that most of the
`
`limitations in the claims are based on known standards and prior art systems
`
`familiar to those of ordinary skill in the art when it was filed. See, e.g., EX1001 at
`
`1
`
`

`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`4:35–36 (phase lock unit); 4:45–46 (video control logic); 5:19 (microprocessor);
`
`
`
`5:27 (address change).
`
`As this petition shows, at least the disclosures of Russell (EX1003), Intel
`
`User’s Manual (EX1004), and Marlton (EX1005), among many other patents and
`
`publications (and for the detailed reasons explained below), warrant cancellation of
`
`claims 2–16.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over Unified’s participation in this proceeding, the filing of this
`
`petition, or the conduct of any ensuing trial. In this regard, Unified has submitted
`
`voluntary discovery. See EX1007
`
`(Petitioner’s Voluntary
`
`Interrogatory
`
`Responses); see also Unified Patents Inc. v. American Vehicular Sciences, LLC,
`
`IPR2016-00364, Paper 13, at 5–7 (P.T.A.B. July 27, 2016) (instituting IPR and
`
`denying challenge to Unified’s real party-in-interest identification).
`
`B. Related Matters
`Upon information and belief, the ’791 patent was asserted in the following
`
`cases: John Berman v. Comcast Corp. et al., 2-16-cv-00412 (E.D. Tex.); John
`
`Berman v. DIRECTV, LLC, 3-16-cv-00382 (N.D. Tex.), and John Berman v. AT&T
`
`Inc., 3-16-cv-00382 (N.D. Tex.); the patent was at issue in AT&T Services, Inc. et
`
`2
`
`

`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`al v. John Berman, 3-16-cv-01106 (N.D. Tex.), which was consolidated with the
`
`
`
`previously listed case.
`
`C. Lead and Back-Up Counsel, and Service Information
`The signature block of this petition designates lead counsel, backup counsel,
`
`and service information for petitioner. Unified designates P. Andrew Riley (Reg.
`
`No. 66,290) as lead counsel and designates Yoonhee Kim (Reg. No. L1048) as
`
`backup counsel. Both can be reached at Finnegan, Henderson, Farabow, Garrett &
`
`Dunner, LLP, 901 New York Avenue, NW, Washington, DC 20001-4413 (phone:
`
`202.408.4000; fax: 202.408.4400). Unified also designates as backup counsel
`
`Jonathan Stroud (Reg. No. 72,518), who can be reached at 1875 Connecticut Ave.
`
`NW, Floor 10, Washington, D.C., 20009 (phone: 650-999-0455). Petitioner
`
`consents to e-mail service at Berman791-IPR@finnegan.com.
`
`III. FEE PAYMENT
`The required fees are submitted under 37 C.F.R. §§ 42.103(a) and 42.15(a).
`
`If any additional fees are due during this proceeding, the Office may charge such
`
`fees to Deposit Account No. 50-6990.
`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’791 patent is available for IPR and that the
`
`Petitioner is not barred or estopped from requesting IPR challenging the ’791
`
`patent on the grounds identified. See 37 C.F.R. § 42.104(a). Specifically: (1)
`
`Petitioner is not the owner of the ’791 patent; (2) Petitioner is not barred or
`
`3
`
`

`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`estopped from requesting IPR; and (3) Petitioner has not been served with a
`
`
`
`complaint alleging infringement of the ’791 patent.
`
`V. THE LEVEL OF ORDINARY SKILL IN THE ART
`U.S. Application No. 136,562, from which the ’791 patent issued, was filed
`
`on October 12, 1993. At that time, a person having ordinary skill in the art
`
`(hereinafter, “POSA”) of video image processing (i.e., in the art for the ’791
`
`patent) would have (i) a B.S. degree in computer engineering, computer science, or
`
`equivalent training, and (ii) approximately two years of experience or research
`
`related to image processing and application. See EX1002 at ¶¶ 15–16.
`
`VI. THE ’791 PATENT
`A. Overview of the Disclosure
`The ’791 patent describes a method and apparatus for placing images over
`
`standard television transmissions on various devices and for distorting images.
`
`Such devices include standard televisions, video and television games, video
`
`systems, and remote controls. EX1001 at 1:7–9.
`
`The interacting apparatus of the ’791 patent consists of two units. Id. at
`
`2:56–57. The main unit contains “the stored overlayed images, the circuitry that
`
`synchronizes the overlayed images with the background video, and all of the logic
`
`that implements the feature of the invention.” Id. at 2:56–60. The second unit, the
`
`“joystick input device,” “allows the viewer to command the main unit.” Id. at
`
`2:60–62. The ’791 patent declares that “[i]t will be clear, however, to those skilled
`
`4
`
`

`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`in the art that other arrangements, which combine the functions of the main unit
`
`
`
`with the source of background video, the joystick control, or the television display
`
`are within the scope and spirit of the present invention.” Id. at 2:67–3:4.
`
`Prosecution History
`
`B.
`The application that led to the ’791 patent was filed on October 12, 1993 and
`
`did not claim priority to any earlier application. Thus, the ’791 patent has an
`
`effective filing date of October 12, 1993.
`
`The Examiner opened prosecution in March 1994 by rejecting original
`
`claims 1, 2, and 4 as anticipated by Russell (EX1003). EX1006 at 26–30. In the
`
`Office Action, the Examiner specifically cited Russell at columns 1:59–2:22,
`
`13:67–14:11, 3:45–5:23, 11:66–13:29 to reject original claim 1; cited column
`
`1:64–67 to reject original claim 2; and cited column 1:59–64 to reject original
`
`claim 4. Id. at 28; EX1002 at ¶ 27.
`
`In response, Applicant added new claims 5–18 and argued that “[t]he system
`
`of Russell, while sophisticated, is nevertheless complex and costly” and “[u]nlike
`
`Russell, in the present invention, the background image is not digitized prior to
`
`processing.” EX1006 at 49. After an interview with the Examiner, Applicant added
`
`new claims 19–20. Id. at 61. At this time, Applicant retracted its previous argument
`
`against Russell, stating that “[i]t is not applicant’s intention to limit the scope of the
`
`claims to a system where the background is not digitized prior to processing, as
`
`5
`
`

`
`
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`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`applicant’s invention may be applied to systems using digitized images (e.g.,
`
`
`
`HDTV or the like).” Id.
`
`The next office action rejected several claims as anticipated by U.S. Patent
`
`No. 5,134,484 to Willson. Id. at 64–65. In response, Applicant cancelled claims 1,
`
`2, 4, and 12 and amended claim 5 to further include the limitation of “selecting
`
`both image and position of the image.” Id. at 73–74, 80–81. Ultimately, claims 5, 6,
`
`and 11 issued as claims 2, 3, and 9, respectively. Id. at 45 (claim 9), 69–70 (claim
`
`2), 70–71 (claim 3).
`
`Notably, when adding new claims in response to the office action citing
`
`Russell, Applicant introduced means-plus-function limitations. Id. at 42–48. None
`
`of
`
`the newly
`
`introduced means-plus-function
`
`limitations appear
`
`in
`
`the
`
`specification;1 they appear only in the claims. EX1002 at ¶ 33.
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 2–16
`
`of the ’791 patent, and their cancellation as unpatentable.
`
`Statutory Grounds of Challenge
`
`B.
`Petitioner requests that the Board hold claims 2–16 unpatentable under
`
`1 As IPR does not permit challenges under 35 U.S.C. § 112, Unified has not
`
`included any indefiniteness arguments.
`
`6
`
`

`
`35 U.S-C- § l03(a) as follows:
`
`IPR20 1 6-01 571 Petition
`
`U.S. Pat. No. 5,523,791
`
`Ground Pro : osed Statuto Re'ections for the ’79l Patent
`
`Exhibit No s .
`
`Claim 2 is obvious under § l03(a) over U.S. Patent No.
`4,855,813 to Russell et al- (“Russell”) alone or in View
`of Intel 82786 Graphics Coprocessor User’s Manual
`“Intel User ’s Manuaf’ .
`
`EX1003,
`EX1004
`
`EX1005
`
`Claims 3-8 and 10-15 are obvious under § 103(a) over
`Russell alone or in View of Intel User ’s Manual.
`
`EX1003,
`EX1004
`
`Claims 9 and 16 are obvious under § 103(a) over
`Russell
`in view of U.S. Patent No. 5,594,467 to
`Marlton et al.
`
`EX1003,
`
`The claim construction, reasons for unpatentability, and specific evidence
`
`supporting this request are detailed below.
`
`C.
`
`Claim Construction
`
`The ’79l patent expired in October 2013. “[T]he Board’s review of the
`
`claims of an expired patent is similar to that of a district court’s review-” In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In a district court, claim terms are
`
`given their ordinary and customary meaning as understood by POSA. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`Unified suggests that the following terms and phrases from the claims of the
`
`’791 patent require construction_2 All the terms phrased with the word “means”
`
`create a presumption that 35 U.S.C. § 112, 1[ 6 applies. Williamson v. Citrix Online,
`
`2 The ordinary and customary meaning should be applied to any claim temis not
`
`addressed below.
`
`

`
`
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`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Such means-plus-function limitations
`
`
`
`should be construed to cover the corresponding structure disclosed in the
`
`specification and structural equivalents thereof. 35 U.S.C. § 112, ¶ 6; Williamson,
`
`792 F.3d at 1347.
`
`“video input means” (claims 2 and 3)
`
`
`1.
`Function: receiving a video signal corresponding to said background video
`
`image. EX1001 at 6:17–18. Corresponding structure: a port to receive video from
`
`a source such as a video cassette recorder, cable converter, or satellite converter.
`
`Id. at 3:39–42, Fig. 2.
`
`“synchronization means” (claims 2 and 3)
`
`
`2.
`Function: generating synchronization signals from said background video
`
`signal. Id. at 6:19–21. Corresponding structure: a phase-lock unit such as Motorola
`
`MC1378. Id. at 4:16–19, Fig. 2.
`
`
`3.
`
`“viewer input means” (claim 2) and “operator input means”
`(claims 2 and 3)
`Function: receiving an input command from a viewer to select an overlay
`
`image, and receiving a position input from a viewer and generating a position
`
`signal to position an image on a display. Id. at 6:22–26. Corresponding structure: a
`
`joystick control unit. Id. at 3:51–53, 5:36–42, Figs. 1, 2.
`
`Unified construes the “operator input means” as having the same meaning as
`
`“viewer input means.” The two terms do not appear in the ’791 patent other than in
`
`8
`
`

`
`
`
`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`the claims. The term “operator input means” in claim 2 has no antecedent basis.
`
`
`
`
`“processor means” (claims 2 and 3)
`4.
`Function: receiving said input command and generating overlay image data.
`
`Id. at 6:27–29. Corresponding structure: a microprocessor. Id. at 4:52–56, Fig. 2.
`
`
`“first memory means” (claims 2 and 3)
`5.
`Function: storing said overlay image data. Id. at 6:30–31. Corresponding
`
`structure: DRAM. Id. at 4:42–48, Fig. 2.
`
`
`“address generator means” (claims 2 and 3)
`6.
`Function: selectively generating memory addresses for said memory means
`
`in response
`
`to said processor means and
`
`in synchronization with said
`
`synchronization means. Id. at 6:32–36. Corresponding structure: video control
`
`logic. Id. at 4:43–46, Fig. 2.
`
`
`“video output means” (claims 2 and 3)
`7.
`Function: selectively reading the overlay image data from said memory
`
`means in synchronization with said synchronization means and merging said
`
`overlay image with said background video image. Id. at 6:38–42. Corresponding
`
`structure: a phase-lock unit and video serializers. Id. at 4:66–5:9, Fig. 2.
`
`Below is Figure 2 of the ’791 patent in which the terms construed above and
`
`9
`
`

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`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`corresponding structures thereof are indicated with annotations.3
`
`
`
`
`
`
`“second memory means” (claim 3)
`8.
`Function: storing a plurality of overlay image data representing a plurality of
`
`overlay images. Id. at 7:3–5. Corresponding structure: none.
`
`
`3 However, a number of the functional blocks shown in Figure 2 of the ’791 patent
`
`provide no structural detail. EX1002 at ¶ 26. No direction or instruction is provided
`
`in the ’791 patent on how to perform overlay video signal generation or overlay
`
`gating. Id. No software code or flow charts are provided in the specification for
`
`generating the overlays or the timing signals so that the video output of the
`
`MC1378 is switched between overlay and background sources. Id.
`
`10
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`

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`
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`IPR2016-01571 Petition
`U.S. Pat. No. 5,523,791
`The term “second memory means” or “second memory” is not defined or
`
`
`
`even recited in the specification, other than in the claims. EX1002 at ¶ 51. For this
`
`petition, Unified construes the term “second memory means” to mean any ordinary
`
`and customary memory “for storing a plurality of overlay image data representing
`
`a plurality of overlay images.” Id.
`
`
`“first switching means” (claim 4)
`9.
`Function: generating a signal to sequentially display each of said plurality of
`
`overlay images. See EX1001 at 7:16–18. Corresponding structure: a joystick
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`control unit to show choice of multiple overlays. Id. at 3:53–4:14.
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`“second switching means” (claim 5)
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`10.
`Function: generating a signal to select a displayed overlay image as a
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`selected overlay image. Id. at 7:21–23. Corresponding structure: a joystick control
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`unit to select from multiple overlays. Id. at 3:53–4:14.
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`“video input means” (claim 9)
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`11.
`Function: receiving a video signal corresponding to said video image. Id. at
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`7:42–43. Corresponding structure: a port to receive video from a source, such as a
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`video cassette recorder, cable converter, or satellite converter. Id. at 3:39–42, Fig.
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`2.
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`“synchronization means” (claim 9)
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`12.
`Function: separating vertical and horizontal synchronization signals from
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`said video signal and generating horizontal and vertical synchronizing pulses. Id. at
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`11
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`U.S. Pat. No. 5,523,791
`7:44–47. Corresponding structure: a phase-lock unit, such as Motorola MC1378.
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`Id. at 4:16–19, Fig. 2.
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`“operator input means” (claim 9)
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`13.
`Function: receiving an input command from an operator for selecting a
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`normal or distorted image. Id. at 7:48–50. Corresponding structure: a joystick
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`control unit. Id. at 3:51–53, 5:36–42, Figs. 1, 2.
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`“video output means” (claim 9)
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`14.
`Function: selectively applying, in response to said input command and a
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`predetermined pattern, said horizontal synchronizing signals and said horizontal
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`synchronizing pulses to each horizontal line of said video signal and outputting a
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`distorted video signal for generating a distorted video image. Id. at 7:51–58.
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`Corresponding structure: a phase-lock unit and video serializers that supply video
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`and overlay enable information for outputting the distorted video signal. Id. at
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`4:66–5:9, Fig. 2.
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`“predetermined pattern” (claims 9 and 16)
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`15.
`Unified proposes that a POSA would interpret the term “predetermined
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`pattern” to mean the data necessary to determine the position of a video on each
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`scan line. EX1002 at ¶ 64. The term “predetermined pattern” is not defined or
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`recited in the ’791 patent other than in claims 9 and 16. Id.
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`U.S. Pat. No. 5,523,791
`VIII. CLAIMS 2–16 OF THE ’791 PATENT ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103(a)
`A. Russell is Prior Art Under 35 U.S.C. § 102(b)
`U.S. Patent No. 4,855,813 (EX1003, “Russell”) issued on August 8, 1989,
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`and is prior art under 35 U.S.C. § 102(b).
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`Intel User’s Manual is Prior Art Under 35 U.S.C. § 102(b)
`
`B.
`The Intel 82786 Graphics Coprocessor User’s Manual (1988) (EX1004,
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`“Intel User’s Manual”) was a printed publication in 1988, and is prior art under 35
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`U.S.C. § 102(b). See EX1008 at ¶¶ 5–7 (declaration of Sharon Jasneski). Russell’s
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`image processing system operates on an Intel 82786 Graphics Coprocessor,
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`EX1003 at 2:28–32, Fig. 2, and Russell incorporates by reference the contents of
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`the 1987 edition of Intel User’s Manual, id. at 3:10–17. Thus, a POSA interested in
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`implementing image processing at the time of the invention (October 1993) would
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`have had both Russell and Intel User’s Manual available. EX1002 at ¶ 65.
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`C. Marlton is Prior Art Under 35 U.S.C. § 102(e)
`U.S. Patent No. 5,594,467 (EX1005, “Marlton”), filed on May 30, 1991,
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`claims priority to G.B. Patent Application No. 9026667, filed on December 7,
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`1990. Marlton is prior art under 35 U.S.C. § 102(e).
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`D. Ground 1: Russell alone or in view of Intel User’s Manual renders
`claim 2 obvious
`Russell relates to a television image processing system having capture,
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`merge, and display capabilities. EX1003 at 1:8–14. Like claim 2 of the ’791 patent,
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`which is directed to an apparatus for inserting an overlay image onto a background
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`
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`video image, Russell’s image processing system is “capable of selectively merging
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`graphics, text, digitized video frames and/or full motion video into a user
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`selectable composite television display.” Id. at claim 1. Russell’s video controller
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`contains the circuitry for “controlling the mixing of real time moving or full
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`motion video pictures and captured/stored video images.” Id. at 11:66–12:4.
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`1.
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`video input means, for receiving a video signal corresponding to
`said background video image
`Figure 2 of Russell shows that images from a video source (26) are fed into
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`the signal processing circuit:
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`FIG. 2, EX1003.
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`
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`In particular, the video input signals (composite video or RGB) are fed into the
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`video controller of Russell’s image processing system. Id. at Abstract, 11:66–
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`12:38. Thus, Russell teaches the function and structure corresponding to the
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`claimed video input means. EX1002 at ¶ 71.
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`2.
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`synchronization means, coupled to said video input means, for
`generating synchronization signals from said background video
`signal
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`Russell discloses that the synchronizing signal generation circuit is part of
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`the video controller. EX1003 at 12:4–8. In particular, the video controller contains
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`“the circuitry for synchronizing the operations of the image processing system and
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`controlling the mixing of real time moving or full motion video pictures and
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`captured/stored video images.” Id. at 11:66–12:4 (emphases added). The
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`synchronizing signal generation circuit in Russell includes a phase-lock unit as a
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`“phase lock” signal is generated by the phase detector (214), which also generates
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`a synchronizing signal. Id. at 12:20–52. Thus, Russell teaches the function and
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`structure corresponding to the claimed synchronization means. EX1002 at ¶ 73.
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`3.
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`viewer input means, comprising selection means for receiving
`an input command from a viewer to select an overlay image and
`position input means for receiving a position input from a
`viewer and generating a position signal to position an image on
`a display
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`The ’791 patent specification explicitly allows for other arrangements than
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`the joystick control unit, which is the corresponding structure of this claim
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`limitation. EX1001 at 2:67–3:4; EX1002 at ¶ 75. In this regard, Russell “relates to
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`an image processing system capable of selectively merging graphics, text, digitized
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`video frames and/or full motion video from any composite or RGB component
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`15
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`video source, such as live video, video camera, video laser disc or video cassette
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`
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`recorder, into a user selectable composite television display in which a number of
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`windows may be overlayed with the windows having variable size and location
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`under user control.” EX1003 at 1:59–67 (emphases added). In Russell, the host
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`computer controls the grab control circuit, which enables grabbing of a live video
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`signal as part of the video controller. Id. at 7:7–25, 12:4–8, Fig. 2.
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`
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`Russell also discloses that users can control “both size and location” of video
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`frames in an output display, id. at 15:11–13, and that “[t]he frames of video to be
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`grabbed may be grabbed at random and enhanced in size and color and inserted in
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`variable size windows with each window being independent of the others,” id. at
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`14:8–11. A POSA would then identify a viewer input means present in Russell’s
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`image processing system, for example, as a part of the host computer shown in
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`Figure 2 such as a keyboard or a mouse. EX1002 at ¶ 77. In view of the above,
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`Russell teaches the function and structure corresponding to the claimed viewer
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`16
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`input means. Id.
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`4.
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`processor means, coupled to said operator input means, for
`receiving said input command and generating overlay image
`data
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`Figure 2 of Russell discloses that the coprocessor (20) coupled to the host
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`computer (28) generates overlay image data for the memory (32). EX1003 at 3:52–
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`65, Fig. 2:
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`
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`As such, generation of overlay images is a part of Russell’s system. Id. at 1:23–30;
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`EX1002 at ¶ 80. Moreover, Russell describes as already known in the art, using a
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`host computer to create overlay image data in the form of windows that appear on
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`the display. EX1003 at 1:16–40, 4:56–61.
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`Russell discloses that such images can be generated by grabbing images
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`from the video input and storing them for use in a win