UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner
`_______________
`
`Case: IPR2018-00246
`
`U.S. Patent No. 7,671,901
`_______________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,671,901
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Page
`
`
`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`2. 
`3. 
`
`4. 
`
`INTRODUCTION .......................................................................................... 1 
`BACKGROUND ............................................................................................ 3 
`A. 
`Technology Background ...................................................................... 3 
`B. 
`Overview of the ’901 Patent Invention ................................................ 4 
`C. 
`The ’901 Patent Prosecution History ................................................... 5 
`D. 
`Summary of Petitioner’s Proposed Grounds of Unpatentability
`and the References Cited ...................................................................... 6 
`1. 
`Japanese Patent Application Publication No. 2003-
`337580 (“Kitazawa”) ................................................................. 7 
`U.S. Patent No. 5,068,718 (“Iwabe”) ........................................ 8 
`Japanese Patent Application Publication No. 6-393551
`(“Yagi”) ...................................................................................... 8 
`U.S. Patent Application Publication No. 2004/0001165
`(“Shiota”) ................................................................................... 9 
`III.  LEGAL STANDARD .................................................................................. 10 
`IV.  THE PETITION DOES NOT SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM ............................................................................. 13 
`A.  Ground I: Petitioner Failed To Establish That Claims 1 and 2
`are Obvious Over Kitazawa in View of Iwabe .................................. 13 
`1. 
`Ground I Has No Likelihood of Succeeding Because
`Kitazawa in View of Iwabe Does Not Disclose or
`Suggest Each and Every Element of the Challenged
`Claims ...................................................................................... 13 
`Ground I Has No Likelihood of Succeeding Because
`Petitioner Does Not Articulate Any Rational
`Underpinning for Combining Kitazawa with Iwabe ............... 18 
`Ground II: Petitioner Failed To Establish That Claim 1 is
`Obvious Over Yagi in View of Shiota ............................................... 22 
`
`2. 
`
`B. 
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`
`1. 
`
`Ground II Has No Likelihood of Succeeding Because
`Petitioner Does Not Articulate Any Rational
`Underpinning for Combining Yagi with Shiota ...................... 23 
`Ground III: Petitioner Failed To Establish That Claim 2 is
`Obvious Over Yagi in View of Shiota and Iwabe ............................. 27 
`D.  Dr. Stevenson’s Declaration Should Be Afforded Little Or No
`Weight ................................................................................................ 28 
`CONCLUSION ............................................................................................. 29 
`
`C. 
`
`V. 
`
`
`
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`ii
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .............................................................. 20, 21, 22
`
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 10
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 59 (P.T.A.B. Nov. 13, 2013) ......................................... 11
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 12
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 12
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 19, 27
`
`Kinetic Techs., Inc. v. Skyworks Sol’ns, Inc.,
`IPR2015-00529, Paper 8 (P.T.A.B. Sept. 23, 2014) ........................................... 28
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 12, 19, 20, 21
`
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 12
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 10
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 10
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 11
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .................................................................... 19, 22
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 (P.T.A.B. Apr. 8, 2013) ........................................... 28
`
`Statutes
`
`35 U.S.C. § 103(a) ............................................................................................... 6, 12
`
`Other Authorities
`
`37 C.F.R. § 1.75(d)(1) .............................................................................................. 10
`
`77 Fed. Reg. 48756 .................................................................................................. 10
`
`77 Fed. Reg. 48766 .................................................................................................. 10
`
`
`
`
`
`
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`iv
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`I.
`
`INTRODUCTION
`
`Patent Owner Maxell, Ltd. (“Patent Owner”) respectfully requests that the
`
`Board deny institution because Petitioner Huawei Device Co., Ltd. (hereinafter
`
`“Petitioner”) has failed to demonstrate a reasonable likelihood of success on the
`
`grounds submitted in its Petition for challenging the patentability of claims 1 and 2
`
`(“challenged claims”) of U.S. Patent No. 7,671,901 (“the ’901 patent”).
`
`First, regarding Petitioner’s first ground of obviousness, Petitioner has not
`
`shown that either the primary reference or the secondary reference disclose a
`
`controller, “wherein the controller corrects luminance of the video signal without
`
`correcting hue and saturation of the video signal.” ’901 Patent at cl. 1 (emphasis
`
`added). Kitazawa and Iwabe disclose different video signal correction techniques
`
`that are directed to changing the luminance of selected pixels, but both of these
`
`techniques will also change the hue and luminance of the pixels. Accordingly, the
`
`combination of Kitazawa and Iwabe would not disclose a video signal technique
`
`that does not correct the hue and saturation of the video signal as well, as required
`
`by Claims 1 and 2 of the ’901 Patent.
`
`Second, also regarding Petitioner’s first ground of obviousness, Petitioner
`
`has not shown that it would have been obvious for a person of ordinary skill in the
`
`art to combine Kitazawa with the teachings of Iwabe. There is a clear difference
`
`between the video signal correction techniques in Kitazawa and Iwabe that
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`Petitioner glosses over that renders the references incompatible and removes any
`
`rational underpinning of a motivation to combine. Kitazawa corrects the luminance
`
`of a video signal by a “stretch” procedure whereby the maximum luminance value
`
`is increased and the minimum luminance value is decreased. In contrast, Iwabe
`
`fixes the luminance value of the maximum and minimum luminance pixels and
`
`decreases the difference between the luminance values of the pixels in between
`
`these values. The Petition is void of any analysis as to how Kitazawa and Iwabe
`
`can be reconciled. As such, Petitioner has not shown it would be obvious to
`
`combine Kitazawa and Iwabe.
`
`Third, regarding Petitioner’s second and third grounds of obvious, Petitioner
`
`fails to show that Yagi in view of Shiota or in view of Shiota and Iwabe discloses a
`
`controller that corrects the luminance of a video signal without correcting the hue
`
`or saturation. ’901 Patent at cl. 1. None of the references teach this limitation. Yagi
`
`does not even mention the words “hue” or “saturation,” nor does the Petition
`
`explain what is considered as the hue and saturation of the image in Yagi. Iwabe
`
`teaches a method that does change hue and saturation, and Petitioner does not
`
`argue that Shiota discloses a video correction technique that satisfies this
`
`limitation.
`
`Fourth, also regarding Petitioner’s second and third grounds of obviousness,
`
`Petitioner has not shown that it would have been obvious for a person of ordinary
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`skill in the art to combine Yagi with the teaching of Shiota. Specifically, Petitioner
`
`points only to the benefits of Shiota, which arguably improves upon the technique
`
`used by Yagi, and states that a person of ordinary skill in the art would be
`
`motivated to modify the structure of Yagi with the teachings of Shiota. But
`
`Petitioner does not suggest any benefits that could be obtained by using the
`
`structure of Yagi rather than the structure of Shiota, and seems to propose a
`
`combination that only achieves the objectives of Shiota alone. Thus, Petitioner has
`
`not shown any rational reason to combine Yagi with Shiota to render Claims 1 and
`
`2 of the ’901 Patent obvious.
`
`Finally, Petitioner supposedly relies on the opinions of Dr. Stevenson to
`
`support its contentions of obviousness, but Dr. Stevenson’s declaration almost
`
`exactly copies the Petition, and it is impossible to tell whether his opinions are his
`
`own or are those of Petitioner’s lawyers. Accordingly, the declaration should be
`
`afforded no probative value, and the resulting Petition is impermissibly conclusory
`
`as to all three grounds of supposed obviousness.
`
`Accordingly, the Board should refuse to institute this inter partes review.
`
`II. BACKGROUND
`A. Technology Background
`The claims at issue in the ’901 Patent relate generally to a video image
`
`processing apparatus with low power consumption. Video image processing
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`analyzes and, if necessary, corrects hue, saturation, and luminance characteristics
`
`of each image within a video on a pixel by pixel basis
`
`At the time of the invention of the ’901 Patent, conventional devices had
`
`narrow video image processing capabilities as a result of limited battery power,
`
`computational resources, and data storage space. Traditional video image
`
`processing methods for use on personal computers and the like would not be
`
`suitable for more resource-limited devices. Accordingly, there was a need to
`
`develop efficient video image processing methods that could be used in mobile
`
`phones, cameras, and the like.
`
`B. Overview of the ’901 Patent Invention
`The ’901 Patent teaches a new video image processing solution that requires
`
`less frequent image correction and consequently uses fewer resources than
`
`conventional methods.
`
`Rather than analyze a video signal on a frame-by-frame basis as
`
`conventional methods did, the ’901 Patent taught analysis and correction only at
`
`certain moments within the video. In particular, the invention of the ’901 Patent
`
`partially utilizes a concept called scene change detection. Scene change detection
`
`was a known concept that automated segmentation of videos into smaller segments
`
`of visually-coherent content, generally for purposes of video indexing, semantic
`
`representation, and tracking. The inventors of the ’901 Patent recognized that this
`
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`Patent No. 7,671,901
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`technology could additionally be used to control video image processing frequency
`
`so as to save computational time and battery power.
`
`Accordingly, the ’901 Patent teaches that hue, saturation, and luminescence
`
`should be analyzed to possibly be corrected when the video input signal changes
`
`(that is, when there is a scene change), but that only the lamination values would
`
`be changed throughout the video in response to an illumination detector. The ’901
`
`Patent
`
`thus proposed a compromise between performance and resource
`
`consumption.
`
`As a result of the invention of the ’901 Patent, better image processing
`
`capabilities were available to resource-limited devices such as mobile phones and
`
`cameras, resulting in better usability of those devices.
`
`C. The ’901 Patent Prosecution History
`Claims 1 and 2 of the ’901 Patent were allowed over the prior art after being
`
`rewritten as independent claims following the first office action. The prior art that
`
`the ’901 Patent was allowed over discloses at least one of the methods that
`
`Petitioner now attempts to rely on to invalidate the ’901 Patent. Specifically, as
`
`discussed below, Kitazawa uses a similar red, green, blue signal correction method
`
`as Japanese patent application publication number 2002-132225, which was
`
`disclosed to the examiner and even discussed in the ’901 Patent’s specification. Ex.
`
`1002 at 70; Ex. 1001 at 1:20-25.
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`
`D.
`
`Summary of Petitioner’s Proposed Grounds of Unpatentability
`and the References Cited
`
`Petitioner contends that claims 1 and 2 of the ’901 Patent would have been
`
`obvious under pre-AIA 35 U.S.C. § 103(a). The Petition raises three grounds of
`
`alleged obviousness based on the following four references.
`
`Japanese Patent Application Publication No. 2003-
`1.
`337580 (“Kitazawa”)
`
`2.
`
`U.S. Patent No. 5,068,718 (“Iwabe”)
`
`Japanese Patent Application Publication No. 6-
`3.
`393551 (“Yagi”)
`
`Patent Application
`U.S.
`4.
`2004/0001165 (“Shiota”)
`
`Publication No.
`
`The Petition asserts the following two obviousness grounds:
`
`Ground
`1
`2
`3
`
`’901 Patent
`Claims
`1 and 2
`1
`2
`
`Type of
`Challenge
`§ 103
`§ 103
`§ 103
`
`Primary
`Reference
`Kitazawa
`Yagi
`Yagi
`
`Secondary
`Reference(s)
`Iwabe
`Shiota
`Shiota and
`Iwabe
`
`
`
` The following is a summary of the references that Petitioner relies upon:
`
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`
`1.
`
`Japanese Patent Application Publication No. 2003-337580
`(“Kitazawa”)
`
`Kitazawa is entitled “Video display device.” Kitazawa is directed to a video
`
`signal conversion circuit that “takes as input a video signal in the form of an analog
`
`signal and, after converting this video signal in the form of an analog signal to a
`
`video signal in the form of a digital signal, performs white and black stretching and
`
`luminance compression.” Ex. 1003 at 0016.
`
`White and black stretching as used by Kitazawa operates in the Red Green
`
`Blue (RGB) color space: a “color differentiation signal separation unit is
`
`provided… which separates a color difference signal included in the video signal
`
`included into signals for the three colors of red (R), green (G), and blue (B) and
`
`inputs these to the white and black stretch unit.” Id. at 0036.
`
`Thus, the methods described by Kitazawa perform both luminance stretch
`
`processing and luminescence compression processing, but, importantly, perform
`
`both in the Red Green Blue (RGB) color space. With this correction method, red,
`
`green, and blue values of a pixel are modified by multiplying and adding variables
`
`to achieve the desired correction. Kitazawa does not disclose a method for
`
`correcting the luminance of the video signal without correcting the hue and
`
`saturation.
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`
`Moreover, Kitazawa’s disclosed method performs white and black stretch
`
`processing based on a maximum (Lmax) and minimum (Lmin) luminance levels of
`
`the input video signals, rather than a distribution of the luminance. Id. at 0088-
`
`0092.
`
`U.S. Patent No. 5,068,718 (“Iwabe”)
`
`2.
`Iwabe is entitled “Image Quality Correcting System for Use with an Imaging
`
`Apparatus.” Iwabe discloses an image quality correcting system that corrects video
`
`signal captured by an imaging apparatus such that two subjects of different
`
`brightness levels can be clearly perceived in the same picture.
`
`The correcting system of Iwabe is performed with white balance adjustment
`
`that adjusts amplitude levels of red, green, and blue values for all pixels in the
`
`image to achieve an optimal white color when an image is reproduced from the
`
`color signals. After this white balance adjustment, a matrix circuit converts R, G,
`
`and B signals to luminance and color difference signals such that difference
`
`brightness levels can be clearly perceived. Iwabe discloses retaining the darkest
`
`and lightest luminance values within an image.
`
`3.
`
`Japanese Patent Application Publication No. 6-393551
`(“Yagi”)
`
`Yagi is entitled “Television Receiver.” Yagi discloses a television receiver
`
`that corrects the contrast of an image signal based on ambient brightness and the
`
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`luminance level of an image signal. Yagi uses the maximum and minimum
`
`luminance values of the displayed image signal to generate a data table that is used
`
`for determining the contrast adjustment.
`
`Thus, Yagi discloses a so-called fuzzy inference method for calculating an
`
`optimal contrast correction value on the basis of the image signal luminance level
`
`and the ambient brightness level. The fuzzy logic disclosed by Yagi includes
`
`inference rules based on discrete thresholds for signal luminance and ambient
`
`brightness levels.
`
`4.
`
`U.S. Patent Application Publication No. 2004/0001165
`(“Shiota”)
`
`Shiota is entitled “Image Processing Apparatus and Image Processing
`
`Method.” Shiota discloses an image processing method that corrects a video
`
`luminance signal to correct the gray scale of a displayed image. This correction
`
`occurs through a histogram-based analysis that corrects maximum and minimum
`
`values detected in a video luminance signal. Shiota’s teachings may result in
`
`improved gray scale correction of the video signal using dynamic range extension
`
`methods.
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`III. CLAIM CONSTRUCTION
`A. Relevant Case Law
`When considering whether to institute a patent trial, the Board has indicated
`
`that it will interpret the claims of a challenged patent using a “broadest reasonable
`
`construction” approach. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48766 (Aug. 14, 2012). In applying such a standard, it is important to recognize
`
`that the broadest reasonable construction of claim language is not one that permits
`
`any reading thereof. Instead, it is one that must be made “in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art.” In re
`
`Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also In re
`
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (vacating Board decision based on
`
`erroneous claim construction; “While the Board must give the terms their broadest
`
`reasonable construction, the construction cannot be divorced from the specification
`
`and the record evidence” (internal citation omitted)). Moreover, the Board “should
`
`also consult
`
`the patent’s prosecution history
`
`in
`
`[inter partes
`
`review]
`
`proceedings . . . .” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015)). Of course, patent claims must “conform to the invention as set forth in
`
`the remainder of the specification and the terms and phrases used in the claims
`
`must find clear support or antecedent basis in the description so that the meaning
`
`of the terms in the claims may be ascertainable by reference to the description.” 37
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`C.F.R. § 1.75(d)(1). That is, “[c]laim terms are also 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.” Garmin Int’l, Inc. v. Cuozzo Speed Techs.
`
`LLC, IPR2012-00001, Paper 59 at 8 (P.T.A.B. Nov. 13, 2013) (citing In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).
`
`Other than the terms addressed below, to the extent Patent Owner has
`
`objections to Petitioner’s proposed or implicit constructions, such objections are
`
`not pertinent to this Preliminary Response. Accordingly, Patent Owner reserves all
`
`rights to provide additional arguments relating to Petitioner’s claim construction
`
`positions if this petition is not denied.
`
`Petitioner makes an inappropriate implicit claim construction
`
`B.
`Petitioner, without support or explanation, splits the limitation that it refers
`
`to as “[1e]” into two parts, and addresses each part separately. Petition at 58. This
`
`has the effect of divorcing analysis of this limitation. Accordingly, Patent Owner
`
`objects that Petitioner appears to consider “when the change of the video signal
`
`does not occur and when the illumination detected by the illumination sensor is
`
`above a predetermined value” as reliant on only a luminance correcting process in
`
`general, and not on the full claim language of Claim 1 of the ’901 Patent.
`
`Accordingly, Petitioner makes an implicit claim construction beyond the “broadest
`
`reasonable construction” without discussion and support.
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`IV. LEGAL STANDARD
`A claim is not patentable if the differences between it and the prior art are
`
`such that the subject matter as a whole would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention. 35 U.S.C. § 103(a) (pre-AIA).
`
`Obviousness requires assessing (1) the “level of ordinary skill in the pertinent art,”
`
`(2) the “scope and content of the prior art,” (3) the “differences between the prior
`
`art and the claims at issue,” and (4) “secondary considerations” of non-obviousness
`
`such as “commercial success, long felt but unsolved needs, failure of others, etc.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
`
`Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
`
`It is the petitioner’s burden “to demonstrate both ‘that a skilled artisan would
`
`have been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention, and that the skilled artisan would have had a reasonable
`
`expectation of success in doing so.’” Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (quotations and citations
`
`omitted). However, a petitioner must first show that all of the claimed elements
`
`are disclosed in the prior art. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`
`1164 (Fed. Cir. 2006) (considering motivation to combine and reasonable
`
`expectation of success only “if all the elements of an invention are found in a
`
`combination of prior art references”). The Petition fails under this legal standard.
`
`
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`V. THE PETITION DOES NOT
`SHOW A REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM
`A. Ground I: Petitioner Failed To Establish That Claims 1 and 2 are
`Obvious Over Kitazawa in View of Iwabe
`
`Petitioner fails to show with a reasonable likelihood of success that Claims 1
`
`and 2 of the ’901 Patent would be obvious to a person of ordinary skill in the art
`
`over Kitazawa in view of Iwabe. First, the Petition fails to demonstrate how either
`
`Kitazawa or Iwabe disclose a controller that “corrects luminance of the video
`
`signal without correcting hue and saturation of the video signal” as required by the
`
`’901 Patent. Both references disclose a video signal correction method that
`
`changes luminance as well as hue and saturation. Second, Petitioner fails to
`
`articulate a rational reason why a person of ordinary skill in the art would
`
`overcome a contradiction between Kitazawa and Iwabe and combine these
`
`references in the manner suggested. Accordingly, the Board should deny
`
`Petitioner’s Ground I of obviousness.
`
`1. Ground I Has No Likelihood of Succeeding Because
`Kitazawa in View of Iwabe Does Not Disclose or Suggest
`Each and Every Element of the Challenged Claims
`
`Claim 1 of the ’901 Patent, on which Claim 2 depends, contains the
`
`limitation of a controller, “wherein the controller corrects luminance of the video
`
`signal without correcting hue and saturation of the video signal when the change of
`
`the video signal does not occur and when the illumination detected by the
`13
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
`
`illumination sensor is above a predetermined value.” Ex. 1001 at cl. 1. Petitioner
`
`argues that “Kitazawa and Iwabe collectively disclose this limitation,” although an
`
`examination of both references shows that neither discloses a method of correcting
`
`the luminance of a video signal without affecting the hue and saturation of the
`
`signal. Petition at 58.
`
`Kitazawa’s method for correcting the luminance inherently affects the
`
`saturation and hue. For example, Figure 15 of Kitazawa shows that red, green, and
`
`blue values will be altered by this signal correction process, showing different “in”
`
`and “out” values for each color, e.g.,
`
`Rout=Rmid + (Rmin – Rmid) x Kw
`Gout=Gmid + (Gmid – Gmin) x Kw
`Bout=Bmid + (Bmid – Bmin) x Kw,
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`and
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`Rout=Rmid – (Rmin – Rin) x Kb
`Gout=Gmid – (Gmid – Gin) x Kb
`Bout=Bmid – (Bmid – Bin) x Kb
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`Ex. 1003 at Fig. 15. Faced with a color alteration method, Petitioner does not make
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`a showing that the hue and saturation are not affected, choosing instead to focus on
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`the fact that Kitazawa does disclose changing the luminance. Petition at 61. But
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`changing luminance is not the same as not changing hue and saturation, as
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`explicitly required by the ’901 Patent. Figure 16 from Kitazawa illustrates
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`luminance compression processing:
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`Unless Lenv = 0, in which case there is no luminance compression,
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`luminance compression will affect saturation. This is further confirmed by Figure
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`11 (copied below) of Kitazwa confirms that regardless of whether a scene change
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`is detected or not at step Sa2 the video signal goes through the exact same stretch
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`processing (Sa5) and luminance correction processing (Sa6). The only difference is
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`that when the scene change is detected, Kitazawa updates the parameters in step
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`Sa3. Such a disclosure, however, does not establish that Kitazwa is “correct[ing]
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`luminance of the video signal without correcting hue and saturation of the video
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`signal when the change of the video signal does not occur and when the
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`illumination detected by the illumination sensor is above a predetermined value”
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`versus “correct[ing] the video signals in accordance with distribution of luminance
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`or hue or saturation of the video signals and with the illumination detected by the
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`illumination sensor when any change occurs in the video signal inputted to the
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`input portion.”
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`Further, Kitazawa does not even mention the words “hue” or “saturation”
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`nor does Petitioner or its expert explain what they are considering as the hue and
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`saturation of the image. Thus, Kitazawa does not disclose this limitation of Claims
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`1 and 2.
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`Petitioner may subtly acknowledge this RGB deficiency of Kitazawa by
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`stating that “Iwabe further discloses operating on the video signal in the luminance
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`signal form only, rather than in the RGB form.” Petition at 61. Petitioner’s
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`argument with respect to Iwabe ignores the fact that Iwabe’s video signal
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`correction method also changes hue and saturation.
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`Iwabe discloses a so-called “white balance adjusting circuit 16” that corrects
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`the video signal before it is inputted to the matrix circuit 9. Any white balance
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`adjusting circuit will change hue and saturation. Thus, if Kitazawa is modified
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`based on the teachings from Iwabe, a person skill in the art would include the
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`white balance adjusting circuit 16 and the matrix conversion circuit 9 and thus the
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`combination will change both hue and saturation inconsistent with Claim 1 of the
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`’901 Patent. Petitioner does not address this deficiency in the teachings of Iwabe.
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`As such, even if Kitazawa and Iwabe could be combined (as set forth below,
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`they cannot be combined), the methods of video signal correction disclosed by
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`each reference implicate changes to hue and saturation and thus fail to render
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`obvious Claim 1 or dependant Claim 2.
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`2. Ground I Has No Likelihood of Succeeding Because
`Petitioner Does Not Articulate Any Rational Underpinning
`for Combining Kitazawa with Iwabe
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`Petitioner does not provide a rational motivation to combine Kitazawa with
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`Iwabe in order to render Claims 1 and 2 of the ’901 Patent obvious. In particular,
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`Petitioner does not articulate a rational reason why a person of ordinary skill in the
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`art would seek to modify the teachings of Kitazawa with the teachings of Iwabe,
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`considering they disclose mutually exclusive methods of video signal correction.
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`Kitazawa and Iwabe cannot be combined in the manner that Petitioner
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`suggests. Kitazawa corrects the luminance of a video signal by a “stretch”
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`procedure whereby the maximum luminance is increased and the minimum
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`luminance is decreased. Petition at 30-31; see also Ex. 1003 at 0089-90.
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`“Therefore, the overall effect… is that the brighter pixels are made even brighter
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`and the darker pixels are made even darker.” Petition at 32. In contrast, Iwabe fixes
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`the luminance value of the maximum and minimum luminance pixels and
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`decreases the difference between the luminance values of the pixels in between
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`these values: “[i]n other words, the darker pixels are made brighter so that a viewer
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`can see them more easily.” Petition at 39; see also Ex. 1005 at 2:3-15. This is
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`substantial difference that Petitioner can easily gloss over by generically stating
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`both references disclose “an image processing apparatus that corrects the
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`luminance of the video signals… based in part on the luminance of the video
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`signals.” Id. at 66.
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`A combination of prior art requires a “rational underpinning.” In re
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`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “Obviousness requires more than a mere
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`showing that the prior art includes separate references covering each separate
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`limitation in a claim under examination. Rather, obviousness requires the
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`additional showing that a person of ordinary skill at the time of the invention
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`would have selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention.” Unigene Labs., Inc. v.
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`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (emphasis added) (citing KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 421 (2007)).
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`Petitioner suggests that there would be up to four reasons to combine
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`Kitazawa with Iwabe, but none of these reasons reconciles the differences between
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`the references in order to make the combination rational. Petition at 66-69, 72-75.
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`Patent No. 7,671,901
`Patent Owner’s Preliminary Response
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`The first reason proposed by the Petitioner is a bare assertion that the references
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`“describe the use of known techniques to improve similar devi