`Trials@uspto.gov
`571-272-7822
`
`
`Paper: 86
`Date: January 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PRISUA ENGINEERING CORP.,
`Patent Owner.
`____________
`
`IPR2017-01188
`Patent 8,650,591 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, STACEY G. WHITE, and
`TERRENCE W. MCMILLIN, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining that All Challenged Claims are Unpatentable
`35 U.S.C. §§ 144, 318(a)
`
`
`
`
`
`
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`
`INTRODUCTION
`I.
`This Decision addresses the opinion of the United States Court of
`Appeals for the Federal Circuit in Samsung Elecs. Am., Inc. v. Prisua Eng’r
`Corp., 948 F.3d 1342 (Fed. Cir. 2020) (hereinafter Samsung), vacating our
`Final Written Decision and remanding for further proceedings. Having
`analyzed the entirety of the record anew in light of the court’s directives in
`Samsung, we conclude that Samsung Electronics America, Inc.
`(“Petitioner”) has shown by a preponderance of the evidence that claims 1–4
`and 8 of U.S. Patent No. 8,650,591 B2 (Ex. 1001, “the ’591 patent”) owned
`by Prisua Engineering Corp. (“Patent Owner”) are unpatentable.
`
`Procedural History
`A.
`Petitioner filed a Petition requesting an inter partes review of claims
`1–4, 8, and 11 of the ’591 patent. Paper 3 (“Pet.”). Patent Owner filed a
`Corrected Preliminary Response. Paper 21. On October 11, 2017, we
`instituted inter partes review of only claim 11 of the ’591 patent. Paper 22
`(“Inst. Dec.”), 38. Thereafter, Patent Owner filed a Corrected Patent Owner
`Response (Paper 26, “PO Resp.”), to which Petitioner filed a Reply (Paper
`35, “Pet. Reply”).
`On May 3, 2018, following the Supreme Court’s decision in SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), we issued an Order (Paper 36)
`modifying our Institution Decision to include review of all challenged
`claims and all grounds presented in the Petition, including those grounds on
`which we had previously not instituted. Patent Owner filed, with
`authorization, a Supplemental Patent Owner Response (Paper 50, “Supp.
`POR”), to which Petitioner filed a Supplemental Reply (Paper 51, “Supp.
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`Reply”). Patent Owner also filed, with authorization, a List Identifying
`Petitioner’s Improper Supplemental Reply Arguments (Paper 60), to which
`Petitioner filed a Response (Paper 62). Patent Owner further filed a Motion
`to Exclude (Paper 57), Petitioner filed an Opposition (Paper 61), and Patent
`Owner filed a Reply (Paper 63).
`On August 22, 2018, we held a hearing and a transcript of the hearing
`is included in the record. Paper 69 (“Tr.”).
`On September 27, 2018, Patent Owner filed a Sur-Reply (Paper 71,
`“Sur-reply”).
`On October 18, 2018, we issued a Final Written Decision and held
`that Petitioner had failed to demonstrate by a preponderance of the evidence
`that claims 1–4 and 8 of the ’591 patent are unpatentable. Paper 73 (“Dec.”),
`48. We stated “at least the ‘digital processing unit’ limitation [recited in
`claim 1] would invoke § 112, sixth paragraph” and “the Petition lacks the
`analysis required by 37 C.F.R. § 42.104(b)(3).” Dec. 20. We determined that
`Petitioner had demonstrated by a preponderance of the evidence that claim
`11 of the ’591 patent is unpatentable, under 35 U.S.C. § 103, as obvious over
`Sitrick.
`The Federal Circuit issued an opinion in Samsung, affirming our
`determination with respect to claim 11, vacating our determination with
`respect to claims 1–4 and 8, and remanding for further proceedings.
`Samsung, 948 F.3d at 1355, 1359; see also Papers 78, 79. The Federal
`Circuit stated the following: “We [ ] reject the Board’s conclusion that the
`term ‘digital processing unit,’ as used in claim 1, invoked means-plus-
`function claiming, and that for that reason claims [1–4 and 8] cannot be
`analyzed for anticipation or obviousness.” Id. at 1354. Moreover, the court
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`directed us, on remand, to “address Samsung’s argument that the Board may
`analyze the patentability of a claim even if that claim is indefinite under the
`reasoning of IPXL,” i.e., whether the claim is unpatentable regardless of
`whether “it is treated as being directed to an apparatus or a method.” Id. at
`1355 (citing IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384
`(Fed. Cir. 2005) (“IPXL”)). The court further directed us as follows: “In the
`remand proceedings, the Board should determine whether claim 1 and its
`dependent claims are unpatentable as anticipated or obvious based on the
`instituted grounds.” Id.
`The Board has jurisdiction under 35 U.S.C. §§ 6 and 144. This
`Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
`§ 42.73. For the reasons discussed below, we determine that Petitioner has
`shown by a preponderance of the evidence that claims 1–4 and 8 of the ’591
`patent are unpatentable.
`
`Related Matters
`B.
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies judicial
`and administrative matters that would affect, or be affected by, a decision in
`this proceeding. In particular, the parties inform us that the ’591 patent is
`involved in Prisua Engineering Corp. v. Samsung Electronics Co., No. 1:16-
`cv-21761 (S.D. Fla.). Pet. 1; Paper 27, 2.
`
`The ’591 Patent (Ex. 1001)
`C.
`The ’591 patent, titled “Video Enabled Digital Devices for
`Embedding User Data in Interactive Applications,” issued February 11,
`2014, from U.S. Patent Application No. 13/042,955. Ex. 1001, codes [54],
`[45], [21]. The ’591 patent generally relates to “a method for generating an
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`edited video data stream from an original video stream wherein generation
`of said edited video stream comprises a step of: substituting at least one
`object in a plurality of objects in said original video stream by at least a
`different object.” Id. at 1:40–47. Figure 3 is reproduced below.
`
`
`Figure 3 shows a simplified illustration of a video image substitution
`according to one embodiment. Id. at 1:63–65. Figure 3 shows “a user input
`150 of a photo image of the user used to replace the face of the image shown
`on the device 108.” Id. at 2:66–3:1. “The user transmits the photo image 150
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`by wired or wireless means to the device 108.” Id. at 3:1–3. “The image
`substitution is performed and the device 108 shows the substituted image
`190.” Id. at 3:3–4.
`
`Figure 1 is reproduced below.
`
`Figure 1 shows a block diagram of a digital system according to one
`embodiment. Id. at 1:59–60. System 100 includes interactive television 102,
`camcorder 104, camera-enabled personal device 106, gaming device 108,
`and “is operable for taking a captured video to be uploaded, or inputted by a
`
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`user, for the purpose of inserting the video content into another video,
`graphics, image sequence selected by the user.” Id. at 2:10–16. “This
`produces a new video sequence 190 which is subsequently broadcasted or
`played by the digital device.” Id. at 2:16–18.
`“User Data Device (UDD) 106 is an image capable digital device”
`whose “input can be image or video data.” Id. at 3:41–49. The image or
`video data captured by UDD 106 can be transmitted to television 102 along
`with “instructions regarding which actor, actress, or structure item he desires
`to replace or substitute in the original program.” Id. at 4:4–10. The
`embedding instructions and user input video data are then transmitted to
`internet network devices that “have the capability of processing the user
`image or video data and the set of instructions that indicate how said user
`input data is to be embedded into the metadata 116 to produce a modified
`broadcast bit stream.” Id. at 4:18–27.
`
`To accomplish the embedding process, the internet
`network devices are capable of performing at least the following
`functions: receiving user input data and instructions, performing
`image and video analysis such as face recognition and detection,
`image and video data portioning, image and video enhancement,
`filtering, texture analysis, data compression and decompression,
`motion detection and estimation, motion correction to adapt the
`motion of the user input sequence with that of the original
`metadata to be broadcasted, error analysis, etc. Once the user
`input data has been correctly embedded into the data to be
`broadcasted, the internet network devices send the resulting
`modified data to the TV 102 to be broadcast.
`
`Id. at 4:28–40.
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`
`Illustrative Claims
`D.
`Claim 1 is independent and claims 2–4 and 8 depend, directly or
`indirectly, from claim 1. Claim 1 is illustrative of the challenged claims and
`is reproduced below.
`1. An interactive media apparatus for generating a displayable
`edited video data stream from an original video data stream,
`wherein at least one pixel in a frame of said original video
`data stream is digitally extracted to form a first image, said
`first image then replaced by a second image resulting from a
`digital extraction of at least one pixel in a frame of a user input
`video data stream, said apparatus comprising:
`an image capture device capturing the user input video data
`stream;
`an image display device displaying the original video stream;
`a data entry device, operably coupled with the image capture
`device and the image display device, operated by a user to
`select the at least one pixel in the frame of the user input
`video data stream to use as the second image, and further
`operated by the user to select the at least one pixel to use as
`the first image;
`wherein said data entry device is selected from a group of
`devices consisting of: a keyboard, a display, a wireless
`communication capability device, and an external memory
`device;
`a digital processing unit operably coupled with the data entry
`device, said digital processing unit performing:
`identifying the selected at least one pixel in the frame of the
`user input video data stream;
`extracting the identified at least one pixel as the second
`image;
`storing the second image in a memory device operably
`coupled with the interactive media apparatus;
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`receiving a selection of the first image from the original
`video data stream;
`extracting the first image;
`spatially matching an area of the second image to an area of
`the first image in the original video data stream, wherein
`spatially matching the areas results in equal spatial
`lengths and widths between said two spatially matched
`areas; and
`performing a substitution of the spatially matched first
`image with the spatially matched second image to
`generate the displayable edited video data stream from
`the original video data stream.
`Ex. 1001, 7:14–54.
`
`Evidence Relied Upon
`E.
`Petitioner relies upon the following prior art references (Pet. 4–5):
`
`Ex. 1006
`Dec. 2, 2008
`
`Senftner US 7,460,731 B2
`Ex. 1007
`July 14, 2005
`Sitrick
`US 2005/0151743 A1
`Ex. 1008
`Levoy
`US 2009/0309990 A1 Dec. 17, 2009
`As support for its challenge, Petitioner submits a Declaration of
`Edward Delp III, Ph.D., who has been retained by Petitioner for the instant
`proceeding. Ex. 1003 ¶ 1. Petitioner also submits a Reply Declaration of Dr.
`Delp (Ex. 1017) and a Supplemental Reply Declaration of Dr. Delp (Ex.
`1025).
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`Patent Owner submits a Declaration of Yolanda Prieto, Ph.D., who
`has been retained by Patent Owner for the instant proceeding. Ex. 2012 ¶ 1.1
`Patent Owner also submits a second Declaration of Dr. Prieto. Ex. 2014.
`
`F. Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 4):
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §2
`Senftner
`1, 2, 8, 11
`102
`Senftner
`1, 2, 8, 11
`103
`Senftner, Levoy
`3, 4
`103
`Sitrick
`1, 2, 8, 11
`103
`Sitrick, Levoy
`3, 4
`103
`Table Summarizing the Grounds Asserted by Petitioner.
`
`II. ANALYSIS
`Patent Owner’s Motion to Terminate the Proceeding
`A.
`Patent Owner filed a Motion to terminate this inter partes review.
`Paper 83. Patent Owner argues that the proceeding should be terminated for
`two reasons: (1) parallel district court litigation has proceeded so far as to
`frustrate the purpose of providing an efficient substitute for resolution of the
`
`
`1 Dr. Prieto’s declaration is labeled “Ex. 2011” in the footer, but was
`uploaded as Exhibit 2012. We cite to it as Exhibit 2012.
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’591
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`
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`validity issues; and (2) we should decline to proceed because we are unable
`to construe the claims. Id. at 1. Petitioner opposes. Paper 84.
`Regarding the first issue, Patent Owner, more specifically, asserts that
`proceeding would frustrate the purpose of an inter partes review providing
`an efficient substitute for the resolution of validity issues because a parallel
`district court litigation proceeded to a jury verdict upholding the ʼ591
`Patent’s validity over two years ago. Paper 83, 1, 5–7 (citing, e.g., NHK
`Spring Co., LTD., v. Intri-Plex Techs, Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential) (“NHK”); Apple Inc., v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar 20, 2020) (precedential) (“Fintiv”)). Regarding
`the second issue, Patent Owner argues that after SAS, “the Board fully denies
`institution where issues of indefiniteness would otherwise dominate the
`proceedings.” Id. at 1–2 (citing SAS, 138 S. Ct. at 1348).
`Petitioner asserts the following:
`
`The Federal Circuit affirmed a portion of the FWD—
`invalidity of claim 11—and remanded for the Board to apply the
`prior art to the remaining claims at issue. Invalidity of claim 11
`is part of the mandate and cannot be reconsidered by the Board.
`And given the Board’s obligations under SAS and 35 U.S.C.
`§ 318 to issue a decision on every claim and ground in the
`petition, the Board has no discretion or authority to partially
`terminate this IPR at this point.
`
`Paper 84, 1 (citing SAS, 138 S. Ct. at 1354; 35 U.S.C. § 318). Petitioner
`further argues “[h]ere, because the invalidity of claim 11 was affirmed on
`appeal, the Office must issue a cancellation certificate with respect to at least
`claim 11 once these proceedings conclude.” Id. at 5 (citing SAS, 138 S. Ct. at
`1354–55; 35 U.S.C. § 318).
`
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`Petitioner also responds to Patent Owner’s first reason asserting that
`even considering the Fintiv factors termination is inappropriate. Id. at 14
`(citing Fintiv at 6). Petitioner, more specifically, asserts that “[t]he district
`court case has [ ] been stayed since the Board modified its institution
`decision to consider all claims following the SAS decision” and “the district
`court has denied Petitioner’s motion to lift the stay following the Federal
`Circuit’s decision and has explained that it will maintain the stay and await
`the final resolution of this IPR before it rules on pending post-trial issues.”
`Id. at 10–11 (citing Ex. 2029, 5–7). Petitioner also responds to the second
`issue raised by Patent Owner, Petitioner asserting that “[t]he Federal Circuit
`also remanded the case with explicit instructions to apply the prior art to
`claims 1–4 and 8 despite the IPXL-type indefiniteness.” Id. at 3–4 (citing
`Samsung at 1353–55).
`We agree with Petitioner. Importantly, once instituted, “[petitioner] is
`entitled to a final written decision addressing all of the claims it has
`challenged.” SAS, 138 S. Ct. at 1359; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) (“TPG”), at 5 (“In instituting
`a trial, the Board will either (1) institute as to all claims challenged in the
`petition and on all grounds in the petition, or (2) institute on no claims and
`deny institution. The Board will not institute on fewer than all claims or all
`challenges in a petition.”) (available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated).
`Patent Owner’s arguments that we should terminate this proceeding
`do not take into consideration the procedural history of the instant
`proceeding. In particular, on May 3, 2018, we modified our institution
`decision to institute on all of the challenged claims presented in the Petition.
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`Paper 36. On October 2, 2019, we entered a Final Written Decision
`addressing all challenged claims. See generally Dec. The Federal Circuit
`issued an opinion in Samsung, affirming our determination with respect to
`claim 11, vacating our determination with respect to only claims 1–4 and 8,
`and remanding for further proceedings. Samsung, 948 F.3d at 1355, 1359;
`see also Papers 78, 79. That procedural history is not in dispute as Patent
`Owner acknowledges that Petitioner prevailed on claim 11. See, e.g., Paper
`83, 10. We, therefore, deny Patent Owner’s request.
`We further note that Patent Owner’s arguments regarding NHK and
`Fintiv are inapposite as contrary to the circumstances in those cases, here
`Patent Owner is requesting termination of a proceeding on remand after
`appeal to the Federal Circuit. Also, consistent with Petitioner’s arguments,
`the parallel district court proceeding is stayed. See generally Ex. 2029.
`Indeed, recently on July 9, 2020, the court issued an order stating that “the
`Court finds that a continued stay pending the outcome of the remand to the
`PTAB is appropriate.” Ex. 2029, 7.
`Also, Patent Owner’s arguments regarding termination relating to
`indefiniteness are not consistent with the mandate. Instead, consistent with
`Petitioner’s arguments, the Federal Circuit directed us, on remand, to
`“address Samsung’s argument that the Board may analyze the patentability
`of a claim even if that claim is indefinite under the reasoning of IPXL.”
`Samsung, 948 F.3d at 1355 (citing IPXL, 430 F.3d at 1384). The court
`further directed us as follows: “In the remand proceedings, the Board should
`determine whether claim 1 and its dependent claims are unpatentable as
`anticipated or obvious based on the instituted grounds.” Id.
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`Accordingly, we deny Patent Owner’s Motion to Terminate the
`proceeding.
`
`B.
`
`Petitioner’s Argument to Apply of Law-of-the-Case or Estoppel
`In the Final Written Decision, we determined that Petitioner had
`demonstrated, by a preponderance of the evidence, that claim 11 of the ’591
`patent is unpatentable under 35 U.S.C. § 103(a) as obvious over Sitrick. Dec.
`48. The Federal Circuit’s opinion in Samsung affirmed our determination
`with respect to claim 11. Samsung, 948 F.3d at 1355, 1359; see also Papers
`78, 79.3
`Petitioner argues that law-of-the-case doctrine and estoppel apply to
`the instant proceeding because claims 1–4 and 8 remaining in this
`proceeding are not materially different from claim 11. Paper 81. Petitioner
`asserts that law-of-the-case doctrine compels a finding that claims 1 and 2
`are obvious over Sitrick. Id. at 5–6 (citing, e.g., Ormco Corp. v. Align Tech.,
`Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)). Petitioner also argues that this
`proceeding should result in a favorable determination for Petitioner as to the
`remaining challenged claims “because the few remaining elements of the
`claims at issue are plainly in the asserted prior art, rendering those claims
`unpatentable under section 103, and/or those claims are not materially
`different from invalid claim 11, rendering them unpatentable.” Id. at 1
`(citing Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed.
`Cir. 2013)).
`
`
`3 We also determined that Petitioner had not established, by a preponderance
`of the evidence, that claim 11 is unpatentable as anticipated by Senftner.
`Dec. 26.
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`Patent Owner asserts that claims 1–4 and 8 contain a limitation — “an
`image display device displaying the original video stream”— that is entirely
`absent from claim 11. Paper 85, 1. Patent Owner argues that this limitation is
`not insignificant and is not taught by Sitrick. Id. at 5–7.
`Although we agree with Petitioner that claims 1 and 11 are similar, as
`Petitioner acknowledges, claim 1 recites “an image display device
`displaying the original video stream,” which is not recited in claim 11. Id. at
`1. Also, claim 11 is written as a method claim instead of an apparatus claim.
`In light of our determinations below (see infra § III.F), however, we
`need not make further determinations regarding law-of-the-case or estoppel.
`
`Principles of Law
`C.
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “To
`anticipate a claim, a prior art reference must disclose every limitation of the
`claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
`1473, 1477 (Fed. Cir. 1997).
`A claim is unpatentable as obvious 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 the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 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 prior art;
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`(3) the level of skill in the art; and (4) where in evidence, so-called
`“secondary considerations,” including commercial success, long-felt but
`unsolved needs, failure of others, and unexpected results. Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill
`D.
`Petitioner contends that a hypothetical person of ordinary skill in the
`art, with respect to and at the time of the’591 patent, would have been “at
`least an engineer with a Bachelor of Science degree and at least three years
`of imaging and signal processing experience or would have earned a
`Master’s Degree in Electrical Engineering and at least two years of
`professional experience in signal, image, and video processing.” Pet. 8; Ex.
`1003 ¶ 25.
`Patent Owner’s declarant contends that such a person “would need to
`be knowledgeable in image processing, in image coding and programming,
`and possess some experience in system and hardware applications as applied
`to image and video applications” and that such knowledge “may be achieved
`by an engineer with a Bachelor of Science degree and at least three years of
`imaging and signal processing experience.” Ex. 2012 ¶¶ 27–285. Patent
`Owner does not otherwise address the level of ordinary skill in the art. See
`generally PO Resp.
`As in our Decision on Institution (Dec. 14), we again determine that
`no express finding on a specific corresponding level of technical education
`and experience is necessary. Here, the level of ordinary skill in the art is
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995).
`
`Claim Construction
`E.
`In this inter partes review, we construe the claim terms according to
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2017).4 Under the
`broadest reasonable construction standard, 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 definition for a
`claim term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). We must be careful not to read a particular embodiment appearing in
`the written description into the claim if the claim language is broader than
`the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). Only terms that are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`4 The claim construction standard to be employed in an inter partes review
`changed. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018). At the time of the filing of the Petition in this
`proceeding, however, the applicable claim construction standard was set
`forth in 37 C.F.R. § 42.100(b) (2017).
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`In our Decision on Institution, we construe “digitally extracted” to
`mean “digitally selected and separated out, such as by copying,” and we
`construe “digital extraction” to mean “digital selection and separation out,
`such as by copying.” Dec. 9–10. Neither party disputes our construction. PO
`Resp. 6; Pet. Reply 4. Having considered the arguments and evidence, we
`maintain our construction of “digitally extracted” to mean “digital selection
`and separation out, such as by copying.”
`Patent Owner proposes constructions for “user input video data
`stream,” “original video data stream,” and “spatially matching” recited in
`claim 1. PO Resp. 7–9. Petitioner contends that “there are no issues as to
`these constructions that the Board needs to resolve.” Pet. Reply. 5. For the
`reasons given below, we use Patent Owner’s proposed constructions for the
`recitations in claim 1 and need not make further determinations regarding
`claim construction to resolve issues before us in this proceeding.
`Patent Owner also proposes that “pixel from the user entering data in
`the data entry display device” recited in claim 3 means “selecting and
`separating out the at least one pixel chosen by a user on a display, when said
`display is acting as a data entry device and receives a selection of at least
`one pixel by said user.” PO Resp. 8. Patent Owner proposes that “at the
`digital processing unit is further capable of extracting the at least one pixel
`from the user pointing to a spatial location in a displayed video frame”
`recited in claim 4 means performing spatial analysis on a video frame based
`on a user input, then selecting and separating out the at least one pixel
`chosen by said user.” Id. As support, Patent Owner points to the description
`in the ’591 Patent Specification of a touchscreen input device. Id. at 9 (citing
`Ex. 1001, 4:45–56).
`
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`Patent 8,650,591 B2
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`Patent Owner’s proposed constructions modify the language of claims
`3 and 4. The description in the ’591 Patent Specification does not support
`all modifications proposed by Patent Owner. Ex. 1001, 4:45–56. We are
`persuaded that claims 3 and 4 are broad enough to encompass the Patent
`Owner’s proposed constructions. For the purposes of this Decision, we need
`not construe the terms more than that. As such, for the reasons discussed
`below, we determine Petitioner has shown that claims 3 and 4 are obvious
`by adopting part of Patent Owner’s proposal that a “data entry display
`device” means a touchscreen device.
`Patent Owner provides additional constructions for recitations in
`claim 4, which modify the actual language of claim 4 without explanation.
`PO Resp. 9. Nonetheless, we determine that Petitioner has shown that claim
`4 is unpatentable using Patent Owner’s constructions.
`
`Sitrick Grounds—Claims 1–4 and 8
`F.
`In light of the Federal Circuit’s opinion in Samsung affirming our
`determination that claim 11 is unpatentable as obvious over Sitrick
`(Samsung, 948 F.3d at 1355, 1359; see also Papers 78, 79), we begin our
`discussion of claims 1–4 and 8 with Petitioner’s grounds of obviousness
`based on Sitrick. In particular, Petitioner contends that claims 1, 2, and 8 are
`unpatentable as obvious over Sitrick. Pet. 4. Petitioner also contends that
`claims 3 and 4 are unpatentable as obvious over Sitrick and Levoy. Id.
`We start with summaries of Sitrick and Levoy and then turn to the
`parties’ contentions.
`
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`Overview of Sitrick
`1.
`Sitrick is directed generally to “a system and method for processing a
`video input signal providing for tracking a selected portion in a predefined
`audiovisual presentation and integrating selected user images into the
`selected portion of the predefined audiovisual presentation.” Ex. 1007,
`Abstract. Figure 1 of Sitrick is reproduced below.
`
`
`
`Figure 1 shows a system block diagram of an embodiment of Sitrick,
`including user image video processing and integration subsystem 100. Id.
`¶ 31. External source of program content 110 includes program video 120, in
`which first person 123 and second person 127 are visible. Id. External source
`of user image content 130 includes user image data 135, in which user
`specified image 137 is visible. Id. Subsystem 100 processes sources 110 and
`130 to produce output content 170, which includes output video 190. Id.
`Output video 190 consists of a processed version of program video 120 such
`that first person 123 has been replaced by user specified image 137. Id.
`
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`Figure 13, reproduced below, is a detailed block diagram of a
`preferred embodiment of Sitrick in which subsystem 100 is implemented on
`a general purpose computer. Id. ¶ 121.
`
`
`As shown in Figure 13, the system comprises frame buffer 1320, MPEG
`encoder 1380, and general purpose computer 1310. Id. at 121. In operation,
`
`The general purpose computer 1310 comprises an extract wire-
`frame means, a wire-frame model database, an orientation
`identification means, a mapping means, and a compositing
`means. The wire-frame model database comprises user
`geometric object information. An output of wire-frame model
`
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`IPR2017-01188
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`data is supplied to the extract wire-frame means. An output of
`the orientation identification means is supplied to the extract
`wire-frame means. The extract wire-frame means transforms the
`wire-frame model data, responsive to information from at least
`one of the frame buffer 1320 and the MPEG encoder 1380, and
`supplied transformed wire-frame model data 1351 to the
`mapping means. In a preferred embodiment, the functions of the
`extract wire-frame means, the orientation identification means,
`the mapping means, and the compositing means may be
`performed by software executing on the general purpose
`computer 1310.
`
`The mapping means maps user replacement object images onto
`the transformed wire-frame model data 1351 producing a texture
`mapped output replacement object image 1341. The replacement
`object image 1341 is provided from the mapping means to the
`compositing means. The compositing means combines the
`replacement object image 1341 with data from the frame buffer
`1320 producing final composited output 1399. The final
`composited output 1399 is representative of the first audiovisual
`presentation with selected portions being replaced by user object
`image content. In a preferred embodiment, the final composited
`output 1399 is provided as an input signal to display unit 1360,
`where it may be displayed as a display presentation 1344.
`
`Id. ¶¶ 122, 123.
`
`Overview of Levoy
`2.
`Levoy is directed to an apparatus for presenting burst images. Ex.
`1008, code (57). Apparatus 100 for presenting burst images includes
`processor 105, user interface 115, communication interface 120, and
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