IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Huawei Device Co., Ltd.,
`Petitioner,
`
`
`v.
`
`
`Maxell, Ltd.,
`Patent Owner.
`
`
`Case: IPR2018-00233
`U.S. Patent No. 6,754,440
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Huawei Device Co., Ltd.,
`Petitioner,
`
`
`v.
`
`
`Maxell, Ltd.,
`Patent Owner.
`
`
`Case: IPR2018-00233
`U.S. Patent No. 6,754,440
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`B.
`
`
`TABLE OF CONTENTS ........................................................................................... i
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`ANDERSON I AND ANDERSON II RENDER CLAIMS 1-8
`OBVIOUS. ....................................................................................................... 3
`A.
`[1a]: “reproducing, from a recording medium, at least moving
`pictures ...” ............................................................................................. 3
`[1b]: “wherein the moving pictures, the first pictures ... are
`recorded on the recording medium.” ..................................................... 8
`[1d]: “outputting a moving picture ...” ................................................11
`C.
`D. Motivation to combine Anderson I and Anderson II ..........................11
`E. Maxell’s argument that Huawei failed to explain its position ............15
`III. OKUDA AND ANDERSON I RENDER CLAIMS 1-8 OBVIOUS. ..........17
`A.
`[1b]: “wherein the moving pictures, the first pictures ... are
`recorded on the recording medium.” ...................................................18
`[1d]: “outputting a moving picture ...” ................................................22
`B.
`Dependent claims 2, 4, 6, and 8 ..........................................................22
`C.
`D. Motivation to combine Okuda and Anderson I ...................................23
`E. Maxell’s argument that Huawei failed to explain its position ............24
`IV. CONCLUSION ..............................................................................................25
`
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 21
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .................................................................... 16, 24
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) ........................................................................ 15, 24
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) ............................................................................ 16
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 2
`LG Elecs., Inc. v. Cellular Commc’ns Equip. LLC,
`IPR2016-00197, Paper 7 (P.T.A.B. April 29, 2016) .......................................... 16
`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015) .......................................................................... 12
`Varian Med. Sys. v. William Beaumont Hosp.,
`IPR2016-00171, Paper 14 (P.T.A.B. May 5, 2016) ..................................... 16, 24
`Whole Space Indus. Ltd. v. Zipshade Indus. (B.V.I.) Corp.,
`IPR2015-00488, Paper 14 (P.T.A.B. July 24, 2015) .................................... 15, 24
`OTHER AUTHORITIES
`37 C.F.R. § 42.6, I .................................................................................................... 27
`37 C.F.R. § 42.24 ..................................................................................................... 26
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`IPR2018-00233
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`I.
`
`INTRODUCTION
`Maxell raises the same arguments that it raised in its Preliminary Response.
`
`In its Institution Decision, the Board rejected each of those arguments. It should do
`
`so now, too.
`
`Regarding Ground I, Maxell argues that the combination of Anderson I and
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`Anderson II does not render claims 1-8 obvious. First, Maxell argues that a
`
`POSITA would not be motivated to modify Anderson I to store thumbnails in
`
`memory. Maxell alleges that because memory was expensive in the late 1990s, a
`
`POSITA would not store thumbnails in memory, and instead would generate them
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`as needed. However, Maxell is incorrect because it ignores that the prior art
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`teaches storing thumbnails in memory as opposed to generating them as needed
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`and explains the benefits of the former approach. Second, Maxell states that
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`Anderson II’s system is limited to still pictures and does not disclose moving
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`pictures. Maxell concludes that the two references do not disclose all limitations of
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`the claims-at-issue. Maxell is mistaken because it ignores that Anderson II
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`discloses moving pictures and the corresponding thumbnails. Third, Maxell alleges
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`that Anderson I teaches away from storing thumbnails primarily because,
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`according to Maxell, the disclosed camera can meet Anderson I’s goal of
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`displaying thumbnails quickly by generating the thumbnails as needed. Maxell
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`ignores that Anderson I is silent on the issue of whether thumbnails are stored in
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`IPR2018-00233
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`memory or generated as needed, and that Anderson II’s disclosure of storing
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`thumbnails in memory furthers Anderson I’s goal of displaying the thumbnails
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`quickly. To the extent, Anderson I generates thumbnails as needed, Maxell fails to
`
`address why a POSITA would not be motivated to further improve the
`
`performance of the camera in Anderson I based on Anderson II’s teaching of
`
`storing thumbnails in memory. Maxell’s objections are clearly based on an
`
`incomplete analysis of the two references. When viewed in its entirety, the
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`combination of Anderson I and Anderson II renders claims 1-8 obvious.
`
`Regarding Ground II, Maxell argues that the combination of Okuda and
`
`Anderson I does not render claims 1-8 obvious. First, Maxell argues that Okuda
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`does not disclose storing moving pictures, still pictures, and the corresponding
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`thumbnails on the same DVD. Maxell is mistaken because it ignores that Okuda
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`teaches storing moving pictures, still pictures, and the corresponding thumbnails
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`on the same DVD. Second, Maxell argues that there is no motivation to combine
`
`Okuda and Anderson I because the devices disclosed in the two references are
`
`different from each other. By focusing solely on the minor differences, Maxell
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`overlooks that Okuda and Anderson I are similar in several key aspects. As a
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`result, under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), a POSITA would
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`be motivated to improve the DVD recorder disclosed in Okuda based on the
`
`teaching of Anderson I. Maxell’s critique of Ground II relies upon an incomplete
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`interpretation of Okuda and Anderson I. Maxell’s arguments are thus unavailing as
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`to the combination of Okuda and Anderson I .
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`Therefore, the Board should find claims 1-8 of the ’440 patent unpatentable,
`
`and cancel those claims.
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`II. ANDERSON I AND ANDERSON II RENDER CLAIMS 1-8
`OBVIOUS.
`Maxell argues that the combination of Anderson I and Anderson II does not
`
`render limitations [1a], [1b], and [1d] obvious, that there is no motivation to
`
`combine the two references, and that Huawei failed to explain its position
`
`adequately. For the reasons discussed below, Maxell is incorrect.1
`
`A.
`
`[1a]: “reproducing, from a recording medium, at least moving
`pictures ...”
`Limitation [1a] requires reproducing moving pictures that have been
`
`encoded by a first encoding method and the associated thumbnails from a
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`recording medium. Maxell raises two arguments, neither of which withstands
`
`
`1 Without any further analysis, Maxell also argues that limitations [3a-b, d], [5a-b,
`
`d], and [7a-b, d] are not met. POR, 14-15, 17. Maxell is incorrect for the same
`
`reasons discussed in Section II.
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`scrutiny.2
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`First, Maxell argues that a POSITA would not be motivated to modify
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`Anderson I to store thumbnails in memory because memory was expensive in the
`
`late 1990s.3 Patent Owner’s Response (Paper 18) (“POR”), 12-14. Maxell is
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`incorrect because prior art references, such as Anderson II and Okuda, explicitly
`
`disclose storing thumbnails in memory. Ex. 1004, 7:19-33, 6:16-28, Fig. 10; Ex.
`
`1025, Souri Transcript, 31:15-23, 39:16-25; Ex. 1005, (0367); Ex. 1026, Schonfeld
`
`
`2 Maxell also argues that Anderson I alone does not render this limitation obvious.
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`Patent Owner’s Response (Paper 18) (“POR”), 11-13. Maxell’s argument is
`
`irrelevant. Huawei’s Petition relies on the combination of Anderson I and
`
`Anderson II. Petition for Inter Partes Review (Paper 1) (“Pet.”), 29-32; see also
`
`Institution Decision (Paper 9) (“D.I.”), 21.
`
`3 Maxell relies on Dr. Souri when it states, “storing frames of videos that could be
`
`generated as needed for purposes of review mode would require additional
`
`memory and increase the cost of the combined system, as acknowledged by
`
`Anderson I.” POR, 14 (quoting Ex. 2005, Souri Declaration ¶54). Maxell is
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`mistaken because Dr. Souri’s declaration does not contain such a statement. Ex.
`
`2005.
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`Reply Declaration ¶3. Maxell’s reliance on two factual assertions by Dr. Souri is
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`misplaced. Dr. Souri asserts that for “[a] camera which stored one million pixel
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`images (1 megapixel), a 100 x 100 pixel thumbnail would have taken an extra 10%
`
`of storage space,” which would discourage a POSITA from storing thumbnails in
`
`memory. POR, 12 (citing Ex. 2005, Souri Declaration ¶50) (emphasis added).
`
`However, Dr. Souri conceded during his deposition that such a thumbnail would
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`have taken only 1%—not 10%—of storage space. Ex. 1025, 58:7-10; see also id.,
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`56:2-9. Dr. Souri also asserts that the Sony DSC-F55 camera, a camera available in
`
`the 1990s, had a 16 MB memory stick that could only store 40 images. POR, 13
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`(citing Ex. 2005 ¶50). According to Dr. Souri, such a small memory would
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`dissuade a POSITA from storing thumbnails in memory. Dr. Souri fails to consider
`
`that other devices from the same time frame offered far more memory that could
`
`store a large number of pictures and the associated thumbnails. For example,
`
`Anderson I discloses a camera with a 340 MB MicroDrive, Ex. 1003, 6:21-24; Ex.
`
`1025, 62:10-14; Okuda discloses a DVD recorder with an optical disk with a 640
`
`MB storage, Ex. 1005, [0002]; Ex. 1025, 62:18-20; and the Hitachi MPEGCAM
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`camera has a 260 MB PC card that could store 3,000 pictures, Ex. 1008, 8, 96; Ex.
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`1025, 63:11-21.
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`Second, Maxell argues that Anderson II’s system is limited to still pictures
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`and does not disclose moving pictures, as required by limitation [1a].4 POR, 13-14.
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`Maxell is incorrect. Anderson II discloses both moving pictures and still pictures.
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`Ex. 1004, 7:13-33 (disclosing a video and the corresponding thumbnail); 6:7-15
`
`(disclosing a still picture and the corresponding thumbnail). As the Board also
`
`noted, Anderson II discloses storing and displaying “video (or a movie clip).”
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`Institution Decision (Paper 9) (“D.I.”), 23 (citing Ex. 1004, 7:13-33, Figs. 9, 10);
`
`see also Ex. 1004, Fig. 7. During his deposition, Dr. Souri agreed that Anderson II
`
`supports movie clips. Ex. 1025, 23:13-19. Dr. Souri also agreed that Anderson II
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`discloses storing a thumbnail for a movie clip, id., 31:15-23, and that selecting the
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`thumbnail would display the corresponding movie clip, id., 28:19-23. Thus, Dr.
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`Souri essentially agreed that Anderson II disclosed moving pictures and the
`
`corresponding thumbnails.
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`But, to avoid that inevitable conclusion, Dr. Souri appeared to raise a new
`
`claim construction argument during his deposition. He argued that the movie clips
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`4 Maxell relies on Dr. Souri when it states, “Anderson II’s system is limited to still
`
`pictures and corresponding thumbnails, and provides no disclosure on the
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`reproduction of thumbnails of moving pictures from a recording medium.” POR,
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`13-14 (quoting Ex. 2005 ¶53). Maxell is mistaken because Dr. Souri’s declaration
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`does not contain such a statement. Ex. 2005.
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`disclosed in Anderson II are not the claimed “moving pictures.” Dr. Souri
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`proffered two reasons: (1) the movie clips are composed of multiple Joint
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`Photographic Experts Group (JPEG) images, and (2) the term “moving pictures”
`
`incorporates other requirements. Ex. 1025, 31:24-33:20. For example, Dr. Souri
`
`argued that “moving pictures” should be encoded by a first encoding method that is
`
`different from a second encoding method that is used to encode still pictures. Id.,
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`33:5-10. Both the reasons proffered by Dr. Souri are wrong. Regarding the first
`
`reason, the term “moving pictures” does not exclude a video composed of multiple
`
`JPEG images because a POSITA would understand that “moving pictures” are not
`
`limited to a particular encoding method. Ex. 1026 ¶9. Dr. Souri’s second reason is
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`also wrong because the features he adds to the term “moving pictures” are separate
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`limitations and do not impose any requirements on the scope of that term. Even if
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`Dr. Souri were correct, the movie clips disclosed in Anderson II meet that
`
`requirement: the movie clips use a different encoding method than the encoding
`
`method used to encode still pictures. Id. ¶9. In particular, the repeated use of JPEG
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`for each frame of a movie clip, and additional functionality ensuring that the
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`individual frames collectively form a video sequence, result in an encoding method
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`(known as Motion JPEG (MJPEG)) that is different from the encoding method
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`(JPEG) employed for still pictures. Id. Thus, the movie clips disclosed in Anderson
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`II can be equated with “moving pictures.” And even if the movie clips disclosed in
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`Anderson II cannot be equated with “moving picture”—and they can be—
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`Anderson I discloses an MPEG video. Ex. 1003, 5:66-6:1. It would have been
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`obvious to apply Anderson II’s teachings to Anderson I’s moving pictures. Ex.
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`1016, Schonfeld Initial Declaration ¶86. In any case, the Board should ignore Dr.
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`Souri’s new claim construction argument because Maxell did not raise it in its
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`POR. In conclusion, Anderson II’s system is not limited to still pictures; it also
`
`includes moving pictures.
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`Accordingly, contrary to Maxell’s arguments, Anderson I and Anderson II
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`collectively disclose this limitation.
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`B.
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`[1b]: “wherein the moving pictures, the first pictures ... are
`recorded on the recording medium.”
`Limitation [1b] requires that the moving pictures, the still pictures, and their
`
`associated thumbnails are recorded on the recording medium. Maxell argues
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`against the combination of Anderson I and Anderson II, asserting Anderson I
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`teaches away from storing thumbnails.
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`First, Maxell argues that Anderson I teaches away from storing thumbnails
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`because doing so would require additional memory. POR, 15 (citing, Ex. 2005
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`¶54). But, as Huawei’s expert Dr. Schonfeld has pointed out, although storing the
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`thumbnails would require more memory, the cost would be minimal and would be
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`outweighed by the benefits of the gain in speed and power savings that accrue
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`when thumbnails are stored in memory. Petition for Inter Partes Review (Paper 1)
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`(“Pet.”), 43-44 (citing Ex. 1016 ¶110). Maxell ignores those benefits and focuses
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`solely on the cost of memory. When considering and rejecting Maxell’s argument
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`in the Patent Owner’s Preliminary Response (Paper 6) (“POPR”), the Board
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`remarked that because “[a] given course of action often has simultaneous
`
`advantages and disadvantages, ... this does not necessarily obviate motivation to
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`combine.” D.I., 41-42 (citing Allied Erecting & Dismantling Co. v. Genesis
`
`Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016)). Thus, Anderson I does
`
`not teach away from storing thumbnails just because doing so would require more
`
`memory.
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`Second, Maxell argues that Anderson I teaches away from storing
`
`thumbnails because doing so would be counterproductive to, and unnecessary for,
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`Anderson I’s goal of displaying thumbnails quickly. POR, 15-16. Maxell is again
`
`incorrect. Maxell neglects to mention that Anderson I is silent on the issue of
`
`whether thumbnails are stored or generated as needed. Maxell also fails to consider
`
`that the teaching of Anderson II would further assist Anderson I reach its goal of
`
`displaying the thumbnails quickly. Ex. 1016 ¶¶106-08; Ex. 1026 ¶4. Thus, instead
`
`of teaching away, the two references provide the motivation to combine them—
`
`Anderson I states a goal and Anderson II shows how to achieve that goal. When
`
`analyzing Anderson I, a POSITA would evaluate the disclosure of Anderson II
`
`because the two references are closely related, and indeed, Anderson I expressly
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`references Anderson II. Ex. 1003, 1:13-17. The processing speed of devices was
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`much slower in the late 1990s than it is now. Ex. 1016 ¶108. Thus, a POSITA
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`would have been motivated to follow the teaching of Anderson II to improve the
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`speed at which the thumbnails are displayed by the camera disclosed in Anderson
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`I. Id. ¶106. Indeed, Maxell argues that the camera in Anderson I is so fast that it
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`would not benefit from Anderson II even though Anderson I uses a mass storage
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`device. POR, 16 (citing Ex. 2005 ¶55). Maxell also argues that the use of
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`removable mass storage in the same camera would cause “significant delay.” Id.
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`(citing Ex. 2005 ¶54), implying that the camera in Anderson I is both fast and
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`slow. Maxell cannot have it both ways. Even if the camera in Anderson I were fast,
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`Maxell fails to address why a POSITA would not have been motivated to further
`
`improve the performance of Anderson I by storing the thumbnails in memory and
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`reproducing them from the memory instead of generating them as needed. Ex.
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`1016 ¶¶106-10. This failure is fatal to Maxell’s argument.
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`During his deposition, Dr. Souri appeared to raise a new argument that
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`Anderson I teaches away from storing thumbnails because it discloses a powerful
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`system that would be wasted if the more efficient teachings of Anderson II were
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`implemented. Ex. 1025, 55:4-8. Dr. Souri’s assumption that the computational
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`power of the Anderson I system is greater than the computational power of the
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`Anderson II system is mere speculation because neither reference addresses this
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`issue. Ex. 1026 ¶5. Even if the computational power of the Anderson I system were
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`greater, a POSITA would still have been motivated to improve speed even further
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`and save power by applying Anderson II’s teachings to Anderson I. Id. Dr. Souri
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`has ignored these benefits. In any event, the Board should ignore Dr. Souri’s new
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`argument because Maxell did not raise it in the POR. Anderson I’s goal of
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`displaying thumbnails quickly is consistent with and benefits from Anderson II’s
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`teaching.
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`Therefore, Anderson I and Anderson II collectively disclose this limitation.
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`[1d]: “outputting a moving picture ...”
`C.
`Maxell relies on the same arguments that it raised for limitations [1a]. Thus,
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`Maxell’s argument fails for the same reasons as discussed above.
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`D. Motivation to combine Anderson I and Anderson II
`Maxell argues that there is no motivation to combine Anderson I and
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`Anderson II because (1) the design requirements of Anderson I and Anderson II
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`are different, and (2) the combination of Anderson I and Anderson II would require
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`a simplification of Anderson I. Maxell’s arguments are substantially the same as
`
`those in the POPR. Compare POPR, 16-24 with POR, 18-25. The Board has
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`already rejected these arguments. D.I., 18. Both of Maxell’s arguments are no
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`better than they were in the POPR.
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`First, Maxell argues that a POSITA would not combine Anderson I and
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`Anderson II because the design requirements imposed by the two references are
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`substantially different. POR, 20-25. Maxell is incorrect because it fails to consider
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`the striking similarities between Anderson I and Anderson II. Pet., 41. Anderson I
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`and Anderson II share the same inventor, and Anderson I expressly references
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`Anderson II. Ex. 1003, 1:13-17. In MobileMedia, the Federal Circuit affirmed
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`invalidity in part because, as here, the two prior art references were published by
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`the same institute and one prior art reference expressly referenced the other prior
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`art reference. MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1176, 1178
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`(Fed. Cir. 2015). To further support its argument that a POSITA would not
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`combine Anderson I and Anderson II, Maxell claims that “Anderson I is not
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`concerned with the ease of use.” POR, 23. Maxell ignores that both Anderson I and
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`Anderson II ultimately aim to enhance the usability of a camera. Ex. 1026 ¶6; see
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`also Ex. 1003, 13:54-57 (an aspect of Anderson I is “to ease the use and
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`operation”). Anderson I discloses using thumbnails in “a review mode (R) for
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`quickly viewing the video clips and images.” Ex. 1003, 5:28-29. Anderson II
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`enables such a quick viewing of thumbnails by storing the thumbnails on a
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`recording medium and reproducing them directly from that medium, thereby,
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`“eliminat[ing] the need for processing captured images” when displaying the
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`thumbnails. Ex. 1004, 6:3-28; Ex. 1026 ¶7.
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`Maxell also mischaracterizes the “operational efficiency” that Anderson II
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`describes, as though efficiency is incompatible with Anderson I. POR, 24-25.
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`Specifically, Maxell argues that the “operational efficiency” discussed in Anderson
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`II discourages using more memory. Id. To the contrary, the “operational
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`efficiency” achieved in Anderson II is precisely the improvement in the speed of
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`displaying the thumbnail that results from storing the thumbnails in memory. Ex.
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`1026 ¶7. Finally, Maxell tries to limit Anderson I to its ability to create slide
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`shows. POR, 20-24. The Board has already rejected that argument. As the Board
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`noted, “Anderson I’s teachings are [not] limited to creating a slide show,” and
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`include “displaying thumbnail pictures for the users to select to display the
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`corresponding video or still picture.” 5 D.I., 16. The Board noted that Anderson I
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`must be considered “for everything that it teaches.” Id. (quoting In re Applied
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`Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)). In conclusion, the design
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`requirements of Anderson I and Anderson II are consistent with each other and
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`would motivate a POSITA to combine them.
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`Second, Maxell argues that the combination of Anderson I and Anderson II
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`would require simplification of Anderson I, namely the removal of the ability to
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`generate presentations. POR, 24. The Board has already rejected Maxell’s
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`5 Conversely, like Anderson I, Anderson II discloses recording slide shows. Ex.
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`1004, 5:57-59.
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`argument. D.I., 17-18 (citing MCM Portfolio LLC v. Hewlett-Packard Co., 812
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`F.3d 1284, 1294 (Fed. Cir. 2015); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985)
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`(en banc)). Modification of Anderson I to store the thumbnails does not require any
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`simplification of Anderson I because “the storing of the thumbnails would only
`
`require retrieving thumbnails from the mass storage device, which would have
`
`resulted in ‘speed gain and power savings’ with only ‘a small cost of using
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`additional space in the recording medium.’” Ex. 1026 ¶8. Dr. Souri could not
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`explain why storing thumbnails in the digital video camera of Anderson I would
`
`have required removing any features from the digital video camera of Anderson I.
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`Ex. 1025, 52:5-55:11. Furthermore, Dr. Souri could not dispute that there is no
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`technical reason that would prevent modifying the camera in Anderson I to permit
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`storage of thumbnails. Id., 49:5-16. Contrary to Maxell’s assertion, the
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`combination of Anderson I and Anderson II does not require any simplification of
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`Anderson I, and would not dissuade a POSITA from combining them.
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`As the Petition explained, Anderson II teaches the benefits of storing the
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`thumbnails on a recording medium and reproducing them from the medium. Pet.,
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`40-44. Dr. Souri agreed that Anderson II teaches storing thumbnails to enable the
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`camera to display the thumbnails without processing the data for the corresponding
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`pictures. Ex. 1025, 38:23-39:15. He also concurred that doing so would improve
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`the speed at which the camera may display the thumbnails, and that this benefit
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`applied both to single images and movie clips. Id., 39:16-25, 40:9-14. Therefore,
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`Dr. Souri acknowledges facts supporting a motivation to combine Anderson I and
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`Anderson II. Pet., 40-44 (citing KSR, 550 U.S. at 401, 417-19).
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`E. Maxell’s argument that Huawei failed to explain its position
`Maxell argues that Huawei failed to explain its position. POR, 25-32.
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`Maxell’s arguments mirror the POPR. Compare POPR, 24-30 with POR, 25-32.
`
`The Board has already rejected these arguments. D.I., 27.
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`Maxell argues that “Petitioner confusingly relies on both Anderson I and
`
`Anderson II collectively for multiple limitations.” POR, 25. To the contrary,
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`Huawei clearly stated what is disclosed and what is absent from each reference.
`
`For example, Huawei states that “[t]hough Anderson I teaches use of thumbnails to
`
`display and access video and still pictures, it is silent on where the thumbnails are
`
`recorded” and that “[i]n contrast, Anderson II teaches that the thumb nail pictures
`
`should be recorded on the recording medium.” Pet., 41-42. The Board has already
`
`rejected Maxell’s argument. D.I., 20-21, 21 n.5.
`
`Maxell’s citations to case law are inapposite factually. In DeSilva, the court
`
`declined to review an argument that was incorporated by reference to a document
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`external to the brief. DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999).
`
`In Whole Space, the Petitioner claimed 21 grounds against each of the independent
`
`claims, but did not address most of the grounds. Whole Space Indus. Ltd. v.
`
`- 15 -
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`
`
`IPR2018-00233
`
`Zipshade Indus. (B.V.I.) Corp., IPR2015-00488, Paper 14, at 10 (P.T.A.B. July 24,
`
`2015). In Dell, the Petitioner presented a new argument for the first time during the
`
`oral argument. Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).
`
`Likewise, Maxell’s reliance on Varian is misplaced because the Board in Varian
`
`rejected the Patent Owner’s argument that any confusion existed. Varian Med. Sys.
`
`v. William Beaumont Hosp., IPR2016-00171, Paper 14, at 33 (P.T.A.B. May 5,
`
`2016).
`
`Maxell argues that “it is unclear why a person of skill in the art would look
`
`to Anderson II” for limitations [1a] and [1b]. POR, 28-30. Although storing
`
`thumbnails on a recording medium would have been obvious to a POSITA,
`
`Anderson II provides the explicit disclosure that storing thumbnails on a recording
`
`medium improves the speed of the thumbnail display. EWP Corp. v. Reliance
`
`Universal Inc., 755 F.2d 898, 906-07 (Fed. Cir. 1985) (requiring the evidence of a
`
`teaching even for an invention that is “strikingly simple”). Maxell’s reliance on
`
`LG Elecs., Inc. v. Cellular Commc’ns Equip. LLC, IPR2016-00197, Paper 7
`
`(P.T.A.B. April 29, 2016) (“LG Electronics”) is also misplaced. LG Electronics is
`
`not apt because the Petitioner there indicated no deficiencies in the primary
`
`reference. Id., 8. In contrast, Huawei has shown what is missing from Anderson I
`
`and what is taught by Anderson II. Pet., 29-36.
`
`Maxell argues that “it is unclear why a person of skill in the art would look
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`- 16 -
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`
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`IPR2018-00233
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`to Anderson II” for limitation [1c]. POR, 30. Limitation [1c] requires “outputting a
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`plurality of reproduced ones of the first pictures.” Huawei relies on Anderson II to
`
`the extent that the term “reproduced ones of the first pictures” requires that the first
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`pictures be reproduced from a recording medium. Pet., 39. The Board has already
`
`considered this issue and agreed with Huawei. D.I., 24-25.
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`Maxell argues that “Petitioner has not identified what part of [1.d] is missing
`
`from Anderson I and why a person of ordinary skill in the art would turn to
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`Anderson II.” POR, 30. Limitation [1d] requires “outputting a moving picture
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`corresponding to any selected first picture.” Maxell ignores that Huawei states,
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`“Anderson I [alone] discloses this limitation.” Pet., 39. Huawei does not rely on
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`Anderson II for limitation [1d], but merely points out as background that this
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`limitation was so common that it also appears on a secondary reference.
`
`III. OKUDA AND ANDERSON I RENDER CLAIMS 1-8 OBVIOUS.
`Maxell argues that the combination of Okuda and Anderson I does not
`
`render limitations [1b], [1d], [2], [4], [6], and [8], obvious, that there is no
`
`motivation to combine the two references, and that Huawei failed to explain its
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`- 17 -
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`IPR2018-00233
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`position adequately. For the reasons discussed below, Maxell is incorrect.6
`
`A.
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`[1b]: “wherein the moving pictures, the first pictures ... are
`recorded on the recording medium.”
`Limitation [1b] requires that the moving pictures, the still pictures and their
`
`thumbnails are recorded on the recording medium. Maxell proffers two reasons to
`
`argue that Okuda does not disclose this limitation. Neither of those reasons
`
`withstands scrutiny.
`
`First, Maxell argues that Okuda does not render this limitation obvious
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`because Okuda does not disclose storing moving pictures and still pictures, and the
`
`corresponding thumbnails, on the same DVD. POR, 34. Maxell mischaracterizes
`
`the disclosure of Okuda.7 Okuda discloses a DVD recorder that stores still pictures
`
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`6 Without any further analysis, Maxell also argues that limitations [3b, d], [5b, d],
`
`and [7b, d] are not met. POR, 37-38. Maxell is incorrect for the same reasons
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`discussed in Section III.
`
`7 Maxell also argues that “Petitioner has not explained why the clips in Okuda are
`
`encoded in a ‘second encoding format,’ which is different from the first encoding
`
`format identified for [1.a],” POR, 33, and that the thumbnails are encoded in
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`MPEG, POR, 33-34. Maxell’s argument is without merit. As the Board has noted,
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`“claim 1 does not recite ‘the moving pictures’ or ‘the first pictures’ are encoded by
`
`a ‘second encoding method.’” D.I., 40.
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`- 18 -
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`
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`IPR2018-00233
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`on a DVD in addition to moving pictures. Specifically, in paragraph (0049), Okuda
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`states that “the AV data [on a DVD-RAM] includes moving picture data, not only
`
`still picture data.” Ex. 1005, (0049) (emphasis added). Apparently, Maxell
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`believes that the “still picture” here refers to “thumbnails.” POR, 36. But, Maxell is
`
`clearly mistaken because Okuda does not conflate these two terms. Okuda refers to
`
`“still picture” and “thumbnails” separately and as distinct items. Ex. 1005, (0047).
`
`In short, Okuda discloses storing moving pictures, still pictures, and the
`
`corresponding thumbnails on the same DVD.
`
`Second, though Maxell concedes that Okuda discloses a digital still camera
`
`that stores JPEG still pictures and their thumbnails, POR, 35, and also discloses a
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`DVD recorder that stores MPEG moving pictures and their thumbnails, POR, 33,
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`Maxell nevertheless argues there is no reason to combine the digital still camera
`
`with the DVD recorder, POR, 35. Relatedly, Maxell argues that even if the two
`
`systems are combined, “[t]he combined system of Okuda’s DVD recorder with the
`
`digital still camera will still have two different recording mediums, one for the
`
`camera and one for the DVD player,” whereas limitation [1b] requires one
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`recording medium. POR, 36 (citing Ex. 2005 ¶73). Maxell mischaracterizes
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`Huawei’s position. Huawei did not propose physically combining the digital still
`
`camera and the DVD player. Rather, Huawei proposed that a POSITA would rely
`
`upon the teachings of Okuda to create a system that saved the moving pictures, still
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`- 19 -
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`IPR2018-00233
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`pictures and their thumbnails on one recording medium. Pet., 61. When rejecting
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`Maxell’s argument, the Board concurred with Huawei and noted that, “combining
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`Okuda’s teachings regarding the digital still camera and the DVD recorder, in the
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