Trials@uspto.gov
`571.272.7822
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` Paper 10
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` Entered: December 14, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`JOHN L. BERMAN,
`Patent Owner.
`____________
`
`Case IPR2016-01571
`Patent 5,523,791
`____________
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`
`
`Before KEN B. BARRETT, PATRICK M. BOUCHER, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`HAAPALA, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2016-01571
`Patent 5,523,791
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`United Patents Inc. (“Petitioner”) filed a Petition pursuant to 35
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`U.S.C. §§ 311–319 to institute an inter partes review of claims 2–16 of U.S.
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`Patent No. 5,523,791 (“the ’791 patent”). Paper 1 (“Pet.”). John L. Berman
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`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
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`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
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`demonstration of a reasonable likelihood that Petitioner would prevail with
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`respect to at least one challenged claim, we deny Petitioner’s request and do
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`not institute an inter partes review.
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`I. BACKGROUND
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`A. The ‘791 Patent (Ex. 1001)
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`The ’791 patent describes techniques for superimposing images over
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`television scenes. Ex. 1001, 1:5–6. A viewer can use an input device, such
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`as a joystick, to select an overlay image and position the overlaid image with
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`respect to the background video to set up humorous or otherwise expressive
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`effects. See id. at 1:34–52. The ’791 patent further describes warping
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`(distorting) the background video in a manner similar to a fun-house mirror
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`by varying the phase of the horizontal or vertical synchronization pulses to
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`produce a variable phase shift of the horizontal lines. See id. at 3:5–12;
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`5:43–61.
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`Figure 1 of the ’571 patent is reproduced below:
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`Figure 1 illustrates a preferred embodiment used to overlay an image on
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`background video and to interact with the overlaid image. See id. at 3:27–
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`39, 3:39–4:14. A source of demodulated video (e.g., video cassette recorder,
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`cable converter) is connected to interacting apparatus 102, which combines
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`demodulated video 94 (background video) with overlayed image 96, such as
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`the hat illustrated in Figure 1. Id. at 3:39–42. The combination of
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`background video 94 with overlayed image 96 is supplied to television
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`receiver 92. Id. at 48–50. Interacting apparatus is controlled by joystick 124
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`to signal to the interacting apparatus to perform various functions, such as
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`selecting a particular overlay image, positioning an overlay image relative to
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`background video, and producing a distortion of the picture. See id. at 3:51–
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`4:14.
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`B. Illustrative Claims
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`Claims 2 and 16 are illustrative of the subject matter of the claims at
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`issue:
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`2. An apparatus for inserting an overlay image onto a
`background video image, said apparatus comprising:
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`input means, for receiving a video signal
`video
`corresponding to said background video image;
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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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`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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`processor means, coupled to said operator input means, for
`receiving said input command and generating overlay image
`data;
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`first memory means, coupled to said processor means, for
`storing said overlay image data;
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`address 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; and
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`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.
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`16. A method of distorting a video image comprising the
`steps of:
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`receiving a video signal corresponding to said video
`image;
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`separating vertical and horizontal synchronization signals
`from said video signal and generating horizontal and vertical
`synchronizing pulses;
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`receiving an input command from an operator for selecting
`a normal or distorted image;
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`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.
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`C. References
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`Petitioner relies on the following references:
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`1. U.S. Patent No. 4,855,813, issued Aug. 8, 1989 (“Russell”)
`(Ex. 1003).
`2. U.S. Patent No. 5,594,467, issued Jan. 14, 1997 (“Marlton”)
`(Ex. 1005).
`3. Intel 82786 Graphics Coprocessor User’s Manual (1988) (“Intel
`User’s Manual”) (Ex. 1004).
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`D. Grounds Asserted
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`Petitioner challenges the patentability of the claims of the ’791 patent
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`under 35 U.S.C. § 103(a) over the following combinations of references:
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`Reference(s)
`Russell alone or in view of Intel
`User’s Manual
`Russell alone or in view of Intel
`User’s Manual
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`Russel and Marlton
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`E. Related Proceedings
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`Claim(s)
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`2
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`3–8, 10–15
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`9, 16
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`Petitioner and Patent Owner identify the following litigation involving
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`the ’791 Patent: (1) Berman v. Comcast Corp., Case No. 2-16-cv-00412
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`(E.D. Tex.); (2) Berman v. DIRECTV, LLC, Case No. 3-16-cv-00382 (N.D.
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`Tex); and (3) AT&T Serv., Inc. v. Berman, Case. No. 3-16-cv-01106 (N.D.
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`Tex). Pet. 2–3; Paper 6, 2. Petitioner also identifies the following additional
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`proceeding as consolidated with Berman v. AT&T: AT&T Services, Inc. v.
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`Berman, Case No. 3:16-cv-01106 (N.D. Tex.). Pet. 2–3.
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`II. ANALYSIS
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`A. Claim Construction
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`The ’791 patent is expired. Our review of claim terms of an expired
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`patent is similar to that of a district court’s review. In re Rambus, Inc., 694
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`F.3d 42, 46 (Fed. Cir. 2012). Specifically, we apply the principle that the
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`words of a claim are generally given their ordinary and customary meaning,
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`as understood by a person of ordinary skill in the art at the time of the
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`invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
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`(en banc). In determining the meaning of a claim limitation, we look
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`principally to the intrinsic evidence of record, examining the claim language
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`itself, the written description, and the prosecution history, if in evidence.
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
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`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
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`1. Means-Plus-Function Terms Appearing in Claim 9
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`Petitioner proposes constructions for a number of terms that appear in
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`claim 9 and recite the word “means.” Pet. 11–12. Patent Owner asserts that
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`construing these terms is not necessary at this time. Prelim. Resp. 13.
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`As Petitioner correctly notes (Pet. 7), a claim term that includes the
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`words “means” is presumptively a means-plus-function element under 35
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`U.S.C. § 112 ¶ 6.1 See Williamson v. Citrix Online, LLC, 792 F.3d 1339,
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`1349 (Fed. Cir. 2015). Such terms are construed to cover the corresponding
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`structure, material, or acts described in the specification and equivalents
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`thereof. 35 U.S.C. § 112 ¶ 6.
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`For purposes of this Decision, we agree with Petitioner that the
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`following terms are presumptively means-plus-function limitations. The
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`terms all include the word “means” and neither party, on the current record,
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`presents any challenge rebutting the presumption. Therefore, we construe
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`them in accordance with 35 U.S.C. § 112 ¶ 6.
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`a. “operator input means”
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`The function recited by this term is “receiving an input command
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`from an operator for selecting a normal or distorted image.” Petitioner
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`asserts the corresponding structure is “a joystick control unit.” Pet. 12
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`(citing Ex. 1001, 3:51–53, 5:36–42, Figs. 1, 2). Patent Owner does not
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`address this construction.
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`For purposes of this Decision, we adopt Petitioner’s proposed
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`structure and construe “operator input means” as “a joystick control unit and
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`equivalents thereof.”
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`b. “video output means”
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`The function recited by this term is “selectively applying, in response
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`to said input command and a predetermined pattern, said horizontal
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`synchronizing signals and said horizontal synchronizing pulses to each
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`1 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”)
`redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-
`29, 125 Stat. 284, 296 (2011). Because the ’791 patent has a filing date
`before the effective date of the AIA, we refer to the pre-AIA version of 35
`U.S.C. § 112.
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`horizontal line of said video signal and outputting a distorted video signal
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`for generating a distorted video image.” Petitioner asserts the corresponding
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`structure is “a phase-lock unit and video serializers that supply video and
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`overlay enable information for outputting the distorted video signal.” Pet.
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`12 (citing Ex. 1001, 4:66–5:9, Fig. 2). Patent Owner does not address this
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`construction.
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`The ’791 patent describes supplying latched video data to video
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`serializers, which supply serialized red, green, blue, and overlay data to
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`overlay enable inputs of the phase lock unit. Ex. 1001, 66:5–6. The ’791
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`patent further describes that variable synchronization delay (VSD) is the
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`basis for apparent warping (distorting) of the image due to a line-to-line
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`phase shift of the phase of the horizontal synchronization. Id. at 5:43–47.
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`The phase-lock unit selects the background video or overlaid image data
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`based on the state of its overlay enable pin, which also determines selection
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`of either the horizontal synchronization (HS) pulse or the standard horizontal
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`synchronization pulse (AHS). Id. at 5:53–59.
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`In view of the foregoing description, we are not convinced that the
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`video serializers perform any part of the recited function of the “video
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`output means.” Rather, the recited functions are described as performed by
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`the phase lock unit based on the state of its overlay enable pin. Accordingly,
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`for purposes of this decision, we construe “video output means” as “a phase-
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`lock unit including an overlay enable pin and equivalents thereof.”
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`2. Other Terms
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`Petitioner and Patent Owner propose constructions for a number of
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`additional terms that appear in the claims of the ’791 patent. See Pet. 8–12;
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`Prelim. Resp. 14. For purposes of this Decision, we do not find it necessary
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`to construe these terms, and accord them their ordinary and customary
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`meaning. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999) (holding that “only those terms need be construed that are in
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`controversy, and only to the extent necessary to resolve the controversy”).
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`B. Discretion Whether to Institute Under 35 U.S.C. § 325(d)
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`Patent Owner contends we should exercise our discretion to deny
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`institution on all grounds because the same or substantially the same prior
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`art or arguments were previously presented to the Office. Prelim. Resp. 2.
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`Specifically, Patent Owner asserts the same alleged prior art that Petitioner
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`relies upon (Russell) was already presented to the Office with the ’791
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`claims clearly distinguished from that prior art. Id.; see also id. at 4–6
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`(describing the prosecution history of the ’791 patent). Patent Owner further
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`asserts that Petitioner has deliberately avoided the complete record of the
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`’791 patent prosecution history and proceedings and fails to address critical
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`arguments that Applicant made during prosecution that were successful in
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`overcoming Russell and getting the claims allowed. Id. at 1, 6–7.
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`Section 325(d) provides: “[i]n determining whether to institute . . . a
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`proceeding . . . , the Director may take into account whether, and reject the
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`petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.” Thus, before we decide
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`whether we should exercise our discretion to deny institution for one or
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`more grounds, we first must determine whether any of the grounds asserted
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`in this Petition present the “same or substantially the same prior art or
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`arguments” as those previously presented to the Office.
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`The prosecution history of the ’571 patent indicates that in an Office
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`Action mailed March 31, 1994, the Examiner rejected originally filed claims
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`1, 2, and 4 as anticipated by Russell. Ex. 1006, 26, 28. The Examiner
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`rejected originally filed claim 3 as anticipated by Dunbar (U.S. 5,235,423;
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`Aug. 10, 1993). Ex. 1006, 28, 30. On January 22, 1994, an Amendment
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`was filed in response to the March 1994 Office Action in which Applicant
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`made arguments distinguishing the rejected claims from Russell’s
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`“superimposing windows over one another in a composite television
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`display.” See id. at 49. In that Amendment, Applicant also added new
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`claims 5–18. Id. at 40–48. Subsequent to the Amendment, an Examiner
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`Interview was conducted and in the Examiner Interview Summary (Aug. 29,
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`1994), the Examiner indicated claims 5, 11, 12, and 18 overcame Russell.
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`Id. at 52. The Examiner further indicated Dunbar was circumvented with
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`the amendment to claim 3. Id. Following a subsequent Amendment (Aug.
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`25, 1994), in which Applicant amended a subset of the claims and added
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`claims 19 and 20, the Examiner issued another Office Action (Nov. 25,
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`1994). In this Office Action, claims 1, 2, 4, 5, 12, 19, and 20 were rejected
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`as anticipated by a new reference (Wilson), and claims 3, 6–11, and 13–18
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`were indicated as “allowable over the prior art of record.” Id. at 64, 66.
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`Applicant made further amendments distinguishing the claims over Wilson
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`and claims 3, 5–11, and 13–20 were ultimately allowed by a Notice of
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`Allowance mailed September 14, 1995.2 See id. at 69–74, 80, 82.
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`Petitioner asserts that claims 2–8 and 10–15 are unpatentable as
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`obvious over Russell alone or in combination with Intel User’s Manual. Pet.
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`13–42. Petitioner further asserts that claims 9 and 16 are unpatentable as
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`obvious over Russell and Marlton. Id. at 42–55. Claims 2–8 and 10–15
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`relate to inserting an overlay image onto a background video image, while
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`2 Claims 3, 5–11, and 13–20 were renumbered upon issuance into issued
`claims 1–16. See Ex. 1006 41–48, 59–60, 69–72 (claim number edits
`indicating issued claim number). The remaining claims were canceled.
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`claims 9 and 16 relate to distorting a video image. For purposes of our
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`analysis, we consider each group separately.
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`1. Claims 2–8 and 10–15
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`For the grounds challenging claims 2–8 and 10–15, we determine that
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`Russell was substantially considered by the Examiner during the prosecution
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`of these claims. Although these issued claims were never rejected over
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`Russell, they were added in Amendments immediately following the Office
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`Action (Mar. 31, 1994) rejecting original claims 1, 2, and 4 over Russell,
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`and preceding the next Office Action (Nov. 25, 1994). The Examiner
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`Interview Summary evidences consideration by the Examiner of Russell for
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`the newly added claims. See Ex. 1006, 52 (indicating a subset of the new
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`claims overcome Russell). Furthermore, in the November 1994 Office
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`Action, the Examiner withdrew the anticipation rejection over Russell and
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`explicitly indicated that another subset of the claims appeared to be
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`allowable over the prior art of record. See Ex. 1006, 63–66. Accordingly,
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`based on the record before us, we find that Russell was considered
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`previously by the Office with regards to claims 2–8 and 10–16.
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`We also determine that the Petition relies on Intel User’s Manual in
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`substantially the same manner as the Examiner used Russell. The Petition
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`cites Intel User’s Manual to teach overlay image data by its description of
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`window management features of the Intel 82786 coprocessor, specifically
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`manipulation and display of multiple windows on a screen. See Pet. 17, 28–
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`29, 32. We agree with Patent Owner’s assertion (Prelim Resp. 5–8) that
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`during prosecution, Applicant submitted arguments distinguishing the claims
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`over Russell’s superimposing windows over another image. See Ex. 1006,
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`49; see also Ex. 1003, 1:64–67, Fig. 13 (describing and illustrating a
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`composite television display in which a number of windows are overlaid
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`with other windows). We find the manipulation and display of windows
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`described in cited sections of Intel User’s Manual is substantially the same
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`prior art as that presented previously to the Office by Russell.
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`We conclude that the Petition relies on the same or substantially the
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`same prior art and arguments presented previously to the Office for the
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`grounds challenging claims 2–8 and 10–15 over Russell alone, or in
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`combination with Intel User’s Manual.
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`We further determine that it is appropriate to exercise our discretion to
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`deny institution of these grounds. Petitioner acknowledges the Examiner
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`specifically used Russell to reject the original claims. Pet. 5. Petitioner
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`further acknowledges that Applicant added the new claims (ultimately
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`resulting in the issued claims) in response to the Office Action in which the
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`rejection over Russell was pending. See id. at 5–6. Nevertheless, Petitioner
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`fails to present any argument distinguishing the Examiner’s prior
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`consideration of Russell or to provide a compelling reason why we should
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`readjudicate substantially the same prior art and arguments as those
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`presented during prosecution and considered by the Examiner. This would
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`not be an efficient use of Board resources in this matter. Accordingly, we
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`exercise our discretion and decline to institute review of claims 2–8 and 10–
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`15 under 35 U.S.C. § 103(a) over Russell, or over Russell and Intel User’s
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`Manual.
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`2. Claims 9 and 16
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`Our analysis differs for the obviousness ground challenging claims 9
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`and 16 over Russell and Marlton. These claims do not recite overlay image
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`data, but rather relate to distorting a video image. The Petition relies on
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`Marlton, not Russell, to disclose distorting a displayed image by using
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`different scaling factors in the horizontal and vertical directions. Pet. 43,
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`46–47. Marlton does not appear on the face of the patent in the list of
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`references cited during prosecution. See Ex. 1001, 1. Nor does Patent
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`Owner assert that Marlton, or prior art substantially the same as Marlton,
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`was considered previously. Rather, Patent Owner merely argues we should
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`reject the petition because Russell was presented previously to the Office.
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`See Prelim Resp. 19. This argument is not sufficient to persuade us the
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`obviousness ground challenging claims 9 and 16 presents the same or
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`substantially the same prior art and arguments as that presented previously to
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`the Office. Accordingly, we decline to deny this ground under § 325(d).
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`C. Obviousness Over Russell and Marlton
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`Petitioner contends that claims 9 and 16 are unpatentable because they
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`would have been obvious under 35 U.S.C. § 103(a) over Russell and
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`Marlton. Pet. 42–55. For the reasons that follow, we are not persuaded that
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`Petitioner has demonstrated a reasonable likelihood of prevailing on this
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`ground.
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`Russell describes an image processing system 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. Ex. 1003, 1:59–65. The image
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`processing system includes a video controller that contains circuitry for
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`synchronizing the operations of the image processing system and controlling
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`the mixing of motion video and captured/stored video pictures. Id. at 11:66–
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`12:4. The video controller includes a phase detector that generates the
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`synchronizing signals for the image processing system, including composite
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`sync, horizontal sync, and vertical sync signals. Id. at 12:39–52.
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`Marlton describes a system for combining video signals and graphics
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`signals on a common display. Ex. 1005, 1:11–12. The video signals are
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`from a video source, such as a video disc player, and the graphics signals are
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`generated by a computer. Id. at 1:13–15. Marlton further describes the
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`displayed image can be distorted in its aspect ratio by using different scaling
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`factors in the horizontal and vertical directions. Id. at 3:35–37; see also id.
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`at Figs. 37a, 37b, 24:15–27 (illustrating and describing the distortion caused
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`by scaling an image by a factor of 50% in the vertical direction and 180% in
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`the horizontal direction). An interpolator can perform horizontal scaling of
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`the signal by sub-sampling at a predetermined clock rate to allow the video
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`to be displayed in a reduced size window of the graphics screen. Id. at 7:31–
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`35.
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`Claim 16 recites selectively applying, in response to said input
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`command [for selecting a normal or distorted image] and a predetermined
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`pattern, said horizontal synchronizing signals and said horizontal
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`synchronizing pulses to each horizontal line of said video signal and
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`outputting a distorted video signal (“selectively applying” limitation).
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`Claim 9 recites similar functions performed by the video output means. For
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`both limitations, Petitioner relies on the arguments presented for claim 9.
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`See Pet. 55 (claim map for claim 16 citing to §§ 9B, 9D of Petition).
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`In particular, Petitioner contends that Russell’s video controller
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`generates “horizontal and vertical synchronization signals” and a person of
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`ordinary skill would have understood a typical sync separator creates pulses
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`for use by the video processing circuitry. Pet. 43–44. Petitioner asserts
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`Russell and Marlton both have the structure for using synchronizing
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`information present in the incoming video signal to produce an output video
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`signal. Id. at 45. Petitioner further asserts Russell discloses applying
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`horizontal and vertical synchronization signals generated from the
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`synchronizing signal controller and Marlton discloses an interpolator that
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`scales an image to create a distorted image. Id. at 45–46. Petitioner argues
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`IPR2016-01571
`Patent 5,523,791
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`that, therefore, the combination of Russell and Marlton teach techniques that
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`allow distortion of video images using a processor and thus disclose the
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`“video output means.” Id. at 46; see also id. at 51–54 (claim map for “video
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`output means”). In support of its assertions, Petitioner relies on testimony of
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`its witness, Thomas A. Gafford. See id. at 43–47 (citing Ex. 1002).
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`Patent Owner argues that Marlton does not disclose a pattern of
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`variable timing from pulse to selective pulse. Prelim. Resp. 20. Patent
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`Owner asserts that, at most, Marlton discloses different horizontal and
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`vertical scaling factors, which refers to scaling imagery on a display whose
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`horizontal synchronization pulses are evenly displayed and independent of
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`any image information displayed. Id.
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`We have reviewed the information provided by Petitioner and
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`determine that Petitioner does not adequately explain or map the “selectively
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`applying” limitation of claim 16 and the “video output means” of claim 9 to
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`the combined teachings of Russell and Marlton. Petitioner’s claim map of
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`the “video output means” consists of block quotes without an explanation of
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`how the cited sections disclose the specific elements of the claim limitation.
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`See Pet. 51–54. Nor does Petitioner adequately explain the mapping in the
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`discussion of this limitation. Petitioner asserts the references have the
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`structure to use synchronizing information, Russell discloses applying
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`horizontal and vertical synchronization signals, and Marlton discloses an
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`interpolator that scales an image to create a distorted image. Id. at 45–47.
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`But Petitioner does not explain how the combination of references discloses
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`selectively applying horizontal synchronizing signals and horizontal
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`synchronizing pulses to output a distorted video signal. See id. at 45–47.
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`Furthermore, with respect to claim 9, Petitioner has not met its burden
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`of demonstrating that the combination of Russell and Marlton discloses the
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`IPR2016-01571
`Patent 5,523,791
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`elements as construed. For instance, although our Decision adopts
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`Petitioner’s proposed construction for operator input means to be “a joystick
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`control unit and equivalents thereof,” the Petition does not map any element
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`of Russell or Marlton to “a joystick control unit” or contend that the user
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`manipulation structures in either reference is equivalent to “a joystick
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`control unit.” See Pet. 44, 50–51.
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`For the foregoing reasons, we conclude Petitioner has not
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`demonstrated a reasonable likelihood of prevailing in establishing that
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`claims 9 and 16 would have been obvious over the combination of Russell
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`and Marlton.
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`In view of the foregoing, it is:
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`III. ORDER
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`ORDERED that Petitioner’s request for inter partes review of
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`claims 2–16 of U.S. Patent 5,523,791 is denied.
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`16
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`PETITIONER:
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`P. Andrew Riley
`Andrew.riley@finnegan.com
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`Yoonhee Kim
`Yoonhee.kim@finnegan.com
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`Jonathan Stroud
`jonathan@unifiedpatents.com
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`PATENT OWNER:
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`John Weatherspoon
`jweatherspoon@kmkpllc.com