Trials@uspto.gov
`571-272-7822
`
`Paper 44
`Date: January 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`IPR2018-01251
`Patent 8,447,132 B1
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`GALLIGAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying-in-Part and Dismissing-in-Part Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2018-01251
`Patent 8,447,132 B1
`
`
`INTRODUCTION
`I.
`In this inter partes review, Apple Inc. (“Petitioner”) challenges the
`patentability of claims 1, 5–8, 11, and 14 of U.S. Patent No. 8,447,132 B1
`(“the ’132 patent,” Ex. 1001), which is assigned to Qualcomm Incorporated
`(“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, we determine that Petitioner has proven by a
`preponderance of the evidence that claims 1, 5–8, 11, and 14 of the ’132
`patent are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review
`instituted under this chapter, the petitioner shall have the burden of proving a
`proposition of unpatentability by a preponderance of the evidence.”).
`A. Procedural History
`On June 26, 2018, Petitioner requested inter partes review of claims
`1, 5–8, 11, and 14 of the ’132 patent on the following grounds:
`Claims Challenged
`35 U.S.C. §1
`References
`1, 6
`103(a)
`Zhang, 2 Konoplev3
`5, 7, 8
`103(a)
`Zhang, Konoplev, Nonaka4
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective after the filing of the
`application for the ’132 patent. Therefore, we apply the pre-AIA versions of
`these sections.
`2 US 2010/0266207 A1, published Oct. 21, 2010 (Ex. 1008).
`3 US 8,265,410 B1, filed June 15, 2010, issued Sept. 11, 2012 (Ex. 1009).
`4 US 2008/0007634 A1, published Jan. 10, 2008 (Ex. 1005).
`
`2
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`IPR2018-01251
`Patent 8,447,132 B1
`Claims Challenged
`11, 14
`
`35 U.S.C. §1
`103(a)
`
`References
`Zhang, Konoplev, Nonaka,
`Gonzalez5
`
`Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). We instituted trial on all grounds of unpatentability.
`Paper 7 (“Dec. on Inst.”), 17. In IPR2018-01250, Petitioner separately
`challenges claims 1, 5–8, and 13 of the ’132 patent.
`During the trial, Patent Owner filed a Response (Paper 27, “PO
`Resp.”), Petitioner filed a Reply (Paper 29, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 34, “PO Sur-reply”).
`Patent Owner filed a Motion to Exclude Exhibit 1010 (Paper 37), to
`which Petitioner filed an Opposition (Paper 38), and in support of which
`Patent Owner filed a Reply (Paper 40).
`A combined oral hearing for this inter partes review and for
`IPR2018-01250 was held on October 10, 2019, a transcript of which appears
`in the record. Paper 43 (“Tr.”).
`B. The ’132 Patent and Illustrative Claim
`The ’132 patent, titled “Dynamic Range Correction Based on Image
`Content,” has a filing date of December 6, 2010, and it claims priority to
`Provisional Patent Application 61/285,063 (“the ’132 Provisional
`Application”), which was filed on December 9, 2009. Ex. 1001, codes (22),
`(54), (60), 1:4–6.
`The ’132 patent generally relates to techniques for improving images.
`Ex. 1001, 1:19–39, 2:7–17. One example given in the ’132 patent is directed
`to improving the visibility of a face in an image. Ex. 1001, 2:7–17. The
`
`5 Rafael C. Gonzalez & Richard E. Woods, Digital Image Processing (3d ed.
`2008) (“Gonzalez”) (Ex. 1010).
`
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`IPR2018-01251
`Patent 8,447,132 B1
`’132 patent explains that, when a digital picture is taken of a person in a dark
`part of a room with a bright window in the background, “the image sensor
`may not be able to acquire both the details of the bright view coming
`through the window and the details of the person’s face.” Ex. 1001, 1:28–
`33. According to the ’132 patent, conventional methods for improving the
`image, such as adjusting the exposure time or using dynamic range
`compression/enhancement methods, “still tend to produce images that lack
`details which are important to the end user.” Ex. 1001, 1:35–39. To address
`this purported problem, the ’132 patent discloses the following:
`[T]he technique introduced here includes a method and apparatus
`for dynamic range correction based on image content. Known
`prior techniques of dynamic range correction do not take into
`consideration or use the content of an image, at least to the extent
`such content has semantic significance (meaning) to a human
`viewer. For example, such methods do not consider or apply the
`principle that showing the details of certain types of objects
`depicted in an image often should have higher priority than the
`rest of the image. As a more specific example, in many instances
`showing the details of a person’s face in the foreground of an
`image should be given higher priority than showing the details
`of a view in the background of the image. The technique
`introduced here considers and applies
`this principle
`in
`performing dynamic range correction.
`Ex. 1001, 2:36–50.
`Of the challenged claims, claim 1 is the only independent claim and is
`reproduced below.
`1.
`A method comprising:
`determining whether a first portion of digital image data
`represents a physical object of a predetermined type;
`determining a correction to apply to the first portion of the
`digital image data, based on a determination that the first portion
`of the digital image data represents a physical object of the
`
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`IPR2018-01251
`Patent 8,447,132 B1
`predetermined type, wherein the determined correction is
`matched to the predetermined type;
`applying the determined correction to the first portion of
`the digital image data to enhance a visual characteristic of the
`first portion of the digital image data, by applying a first amount
`of the correction to the first portion of the digital image data; and
`applying a second amount of the correction to a second
`portion of the digital image data, wherein the first amount differs
`from the second amount, and wherein the first amount
`corresponds to a physical object of the predetermined type.
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Alan Bovik, 6 offers the following
`assessment as to the level of ordinary skill in the art:
`A person of ordinary skill in the art as of the Critical Date7
`(a “POSITA”) would have had a Bachelor of Science degree in
`computer science or a similar technical field together with 3-5
`years of educational practicum or work experience in the field of
`computer vision and/or image processing.
`
`
`6 Petitioner submitted the declaration of Dr. Larry Davis with its Petition,
`but, due to Dr. Davis’s unavailability for deposition, Petitioner sought to
`enter a substitute declaration in the record. We held a call with the parties to
`discuss the issue. On the call, the parties agreed to a general framework for
`dealing with the situation. Paper 13. After the call, the parties met and
`conferred and emailed us with their proposed solution to allow Petitioner to
`serve and file a substitute declaration (Ex. 3001), and we authorized the
`parties to proceed as agreed (Paper 13). Petitioner filed Dr. Bovik’s
`declaration as Exhibit 1017 and moved unopposed to expunge Dr. Davis’s
`declaration. Paper 15. We granted Petitioner’s unopposed motion and
`expunged Dr. Davis’s declaration. Paper 22.
`7 Dr. Bovik identifies the Critical Date as December 9, 2009, the date of
`filing of the ’132 Provisional Application, to which the ’132 patent claims
`priority. Ex. 1003 ¶ 6.
`
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`IPR2018-01251
`Patent 8,447,132 B1
`Ex. 1017 ¶ 7. Citing the testimony of its declarant, Dr. John Villasenor,
`Patent Owner argues that the level of ordinary skill in the art would have
`been that of a person with “a bachelor’s degree in electrical engineering,
`computer science, or a related discipline, and 2-3 years of experience in
`image processing.” PO Resp. 6 (citing Ex. 2005 ¶ 26). Dr. Villasenor
`testifies that, “[d]espite the differences in the definition of one of ordinary
`skill in the art, I do not believe that there is a meaningful change of outcome
`using one definition of a person of ordinary skill in the art or the other.”
`Ex. 2005 ¶ 28.
`Neither party explains in detail why its proposed level of ordinary
`skill in the art should be adopted. Although there are slight differences
`between the proposed levels of ordinary skill in the art, the parties’
`declarants agree that a person with a Bachelor of Science degree in a field
`such as computer science and professional experience in image processing
`would qualify as a person of ordinary skill in the art. Ex. 1017 ¶ 7; Ex. 2005
`¶ 26. Based on the evidence of record, including the testimony of the
`parties’ declarants, the subject matter at issue, and the prior art of record, we
`determine that the skill level of a person of ordinary skill in the art would
`have been that of a person having a Bachelor of Science degree in electrical
`engineering, computer science, or a related discipline, and three years of
`experience in image processing. We apply this level of ordinary skill in the
`art in our analysis.
`
`B. Claim Interpretation
`In an inter partes review for a petition filed before November 13,
`2018, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.100(b) (2018); see Changes to the Claim Construction
`
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`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). The Petition was
`accorded a filing date of June 26, 2018, and, therefore, the broadest
`reasonable interpretation standard for claim interpretation applies. See
`Paper 5 (Notice of Filing Date Accorded to Petition).
`In applying a broadest reasonable interpretation, claim terms generally
`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. See In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). This
`presumption may be rebutted when a patentee, acting as a lexicographer, sets
`forth an alternate definition of a term in the specification with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). Furthermore, only terms that are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner proposes a construction for “physical object of a
`predetermined type.” Pet.14–15. Patent Owner does not dispute Petitioner’s
`proposed construction. PO Resp. 6. Further, there is no dispute between the
`parties that the art teaches “determining whether a first portion of digital
`image data represents a physical object of a predetermined type.” See
`generally PO Resp. Therefore, this term does not require express
`construction.
`Based on the trial record, we do not find it necessary to construe
`expressly any claim terms.
`
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`IPR2018-01251
`Patent 8,447,132 B1
`
`C. Principles of Law
`A patent claim is unpatentable 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;
`(3) the level of ordinary skill in the art; and (4) any secondary
`considerations, if in evidence. 8 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`D. Obviousness over Zhang and Konoplev
`(Claims 1, 6)
`Petitioner contends claims 1 and 6 of the ’132 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over the combined teachings of Zhang
`and Konoplev. Pet. 2, 18–29.
`
`1. Zhang
`Like the ’132 patent, Zhang is directed to image enhancement.
`Ex. 1008, code (57). Zhang describes defining a head and body region of an
`image as a foreground, blending a transition region coupled to the
`foreground and the background, and blending the foreground, transition
`region, and background to form a new digital image. Id. at code (57), ¶ 6.
`
`
`8 Patent Owner does not present any objective evidence of nonobviousness
`(i.e., secondary considerations) as to any of the challenged claims.
`
`8
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`IPR2018-01251
`Patent 8,447,132 B1
`
`2. Konoplev
`a) Prior art status
`Konoplev, titled “Automatic Correction and Enhancement of Facial
`Images,” has a filing date of June 15, 2010, and it claims priority to
`Provisional Patent Application 61/224,853 (“the Konoplev Provisional
`Application”), which was filed on July 11, 2009. Ex. 1009, codes (22), (54),
`(60), 1:7–9. Petitioner contends Konoplev qualifies as prior art under
`35 U.S.C. § 102(e). Pet. 2. Petitioner also contends that the Konoplev
`Provisional Application supports independent claims 1 and 13 of Konoplev
`and, therefore, that Konoplev is entitled to the benefit of the July 11, 2009,
`filing date of the Konoplev Provisional Application. Pet. 3–14 (citing
`Ex. 1012; Ex. 1013; Ex. 1017 ¶ 92).
`Before institution, Patent Owner argued that “Konoplev recites a
`number of limitations for which Petitioner has failed to identify adequate
`§ 112, ¶ 1 support in the Konoplev provisional application” and, therefore,
`that Konoplev is not prior art under 35 U.S.C. § 102(e). Prelim. Resp. 24;
`see id. at 25–31 (analyzing particular limitations of Konoplev’s claim 1 that
`allegedly lack support in the Konoplev Provisional Application). At that
`time, however, Patent Owner did not argue that the ’132 patent is entitled to
`the benefit of its own provisional application. See Dec. on Inst. 9–10 (noting
`that “Patent Owner has not yet come forward with evidence or argued that
`the challenged claims of the ’132 patent are entitled to the benefit of the
`’132 Provisional Application’s filing date”).
`In the Decision on Institution, we stated that, “just as there is no
`presumption that Konoplev is entitled to the benefit of the Konoplev
`Provisional Application’s filing date, we see no reason that the ’132 patent
`should be presumed to be entitled to the filing date of the ’132 Provisional
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`IPR2018-01251
`Patent 8,447,132 B1
`Application.” Dec. on Inst. 9; see Dynamic Drinkware, LLC, v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015) (stating that “creat[ing]
`a presumption that a patent is entitled to the benefit of the filing date of its
`provisional precursor . . . would be unsound because the PTO does not
`examine provisional applications as a matter of course; such a presumption
`is therefore not justified”). We determined that Konoplev is prior art under
`35 U.S.C. § 102(e)(2) because its June 15, 2010, filing date is before the
`’132 patent’s December 6, 2010, filing date. Dec. on Inst. 9. We also
`directed the parties to the discussion in Dynamic Drinkware of the shifting
`of burdens of production. Dec. on Inst. 9 (citing Dynamic Drinkware, 800
`F.3d at 1378–81).
`In its Response, Patent Owner provides a claim chart quoting, in the
`left column, the limitations of claims 1, 5–8, 11, and 14 and, in the right
`column, disclosure from the ’132 Provisional Application. PO Resp. 9–21.
`Patent Owner argues, “As demonstrated in the claim chart below, challenged
`claims 1, 5-8, 11, and 14 are supported by U.S. Prov. App. No. 60/285,063
`(the ‘’132 Provisional,’ Ex. 2003) in compliance with § 112, ¶1.” PO
`Resp. 8 (citing Dynamic Drinkware, 800 F.3d at 1378–81; Ex. 2005 ¶ 43).
`Except for one explanatory footnote for claim 8 (PO Resp. 19 n.1), Patent
`Owner provides no explanation as to how the quoted disclosure from the
`’132 Provisional Application provides section 112, first paragraph, support
`for the claimed subject matter. For much of the subject matter of claim 1,
`Patent Owner relies primarily on the following disclosure from the ’132
`Provisional Application:
`One way of content based dynamic range correction is
`using Coach 11 Face Detection for content identification and
`Coach 11 Z-Light for dynamic range compression. The Coach
`11 Face Detection will be used to identify faces in the image.
`
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`IPR2018-01251
`Patent 8,447,132 B1
`The ouput [sic] of the Face Detectino modul [sic] is a list of faces
`along with their corresponding locations in the image. The list
`of faces locations will be used as an input to the Z-Light module.
`The Z-Light module will analyse the face locations in the image
`and determine the digital gain to be applied to those areas.
`For normal image data (non-face), Z-Light applies a
`digital gain which is calculated accoring [sic] to a user defined
`gain LUT. The LUT defines the input/output relation (digital
`gain), futher [sic] more Z-Light will make sure local contrast is
`maintained when applying the digital gain. The gain LUT, is
`designed by the camera manufacturer to best fit normal content
`(without specific priority).
`For specific image content (i.e. face), Z-Light will use a
`gain LUT which is optimized to brighten the face to a desired
`user level. The gain LUT will be calculated according to the face
`image data which can be obtained from the image data (input to
`Z-Light) and the face location (ouptut [sic] of Face Detection
`module).
`Another way to acheive [sic] a similar effect is to edit the
`Z-light gain map at the location of faces. The Z-Light gain map
`is a 2D map of digital gain coeficients [sic] which will be applied
`to the image data. This can be done using SW (CPU only) or by
`applying an alpha map which is compose [sic] of the face
`locations using the Coach 11 IMIX HW accelerator.
`Ex. 2003, 8 (exhibit page number), quoted in PO Resp. 10–11. Patent
`Owner also reproduces the following figure:
`
`11
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`IPR2018-01251
`Patent 8,447,132 B1
`
`
`Ex. 2003, 9 (exhibit page number), reproduced in PO Resp. 11. The figure
`reproduced above is a block diagram showing blocks labeled “Face
`Detection” and “Image Data” with arrows going to a block labeled “Z-
`Light,” whose output arrow goes to a block labeled “Corrected Image.”
`According to Patent Owner’s claim chart, the ’132 Provisional
`Application’s disclosures pertaining to the “Z-Light module” provide
`section 112, first paragraph support for the determining and applying steps
`of claim 1. PO Resp. 9–14. But other than broad functional statements
`about what the Z-Light module allegedly accomplishes, the ’132 Provisional
`Application contains no disclosure of what the Z-Light module is, and Patent
`Owner provides no argument or evidence explaining how the ’132
`Provisional Application’s disclosure of the Z-Light module “convey[s] with
`reasonable clarity to those skilled in the art that, as of the filing date sought,”
`that the applicant “was in possession of the invention.” Vas-Cath, Inc. v.
`Mahurkar, 935 F.2d 1555, 1563‒64 (Fed. Cir. 1991).
`
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`Patent 8,447,132 B1
`In this case, Petitioner satisfied its initial burden of production by
`asserting Konoplev as prior art because Konoplev’s non-provisional filing
`date precedes the ’132 patent’s non-provisional filing date. See Dynamic
`Drinkware, 800 F.3d at 1379. The burden of production, i.e., “the burden of
`going forward with evidence,” then shifted to Patent Owner to show that
`Konoplev is not prior art because the ’132 patent is entitled to an earlier
`filing date. Dynamic Drinkware, 800 F.3d at 1379–80. As the Federal
`Circuit has stated, this “mean[s] both producing additional evidence and
`presenting persuasive argument based on new evidence or evidence already
`of record, as the case may require.” Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316, 1327 (Fed. Cir. 2008). Here, Patent Owner provides no
`argument at all explaining how the ’132 Provisional Application’s Z-Light
`disclosures provide written description support for the determining and
`applying steps of claim 1. Nor does Patent Owner’s declarant, Dr.
`Villasenor, provide testimony explaining how the disclosure of the Z-Light
`module conveys possession of the invention to persons of ordinary skill in
`the art. Rather, Dr. Villasenor testifies, “In light of what I have been
`informed about regarding written description and enablement (¶¶35-37,
`above), and as demonstrated in the below claim chart, it is my opinion that
`the claims at issue (Claims 1, 5-8, 11, and 14) are supported by” the ’132
`Provisional Application, and he reproduces the same claim chart that is in
`the Patent Owner Response. Ex. 2005 ¶ 43. The only substantive
`explanation of the ’132 Provisional Application that Dr. Villasenor provides
`has to do with maintaining local contrast, which pertains to claim 8. Ex.
`2005 ¶ 44. Patent Owner directs us to no evidence in the record showing
`that the Z-Light module would have been readily recognized by persons of
`ordinary skill in the art such that its disclosure would provide written
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`Patent 8,447,132 B1
`description support. Furthermore, the Z-Light module appears nowhere in
`the ’132 patent itself.
`Based on the foregoing, we determine Patent Owner has failed to
`carry its burden of production to show—with evidence and persuasive
`argument—that the ’132 Provisional Application provides section 112, first
`paragraph support for claim 1 of the ’132 patent, and, by virtue of their
`dependency, claims 5–8, 11, and 14, at least as to the written description
`requirement.
`Therefore, Konoplev is prior art under 35 U.S.C. § 102(e)(2) because
`its June 15, 2010, filing date is before the ’132 patent’s December 6, 2010,
`filing date.
`
`b) Overview
`Like the ’132 patent, Konoplev is directed to enhancing digital
`images. Ex. 1009, code (57). In particular, Konoplev describes detecting
`facial images, recognizing imperfections, and correcting the imperfections.
`Id. at code (57), 2:3–9.
`
`3. Claim 1
`a) First “determining” step
`Independent method claim 1 is reproduced above and recites
`“determining whether a first portion of digital image data represents a
`physical object of a predetermined type.” Petitioner contends Zhang’s
`disclosure of identifying head and body regions as a foreground of an image
`teaches this limitation. Pet. 23 (citing Ex. 1008, code (57), ¶¶ 6–9, 14–42,
`Figs. 1, 2, 4; Ex. 1017 ¶¶ 45–62). We agree, and we find Zhang teaches this
`subject matter because Zhang discloses the following:
`The foreground definition procedure 20 adopts a face detection
`technique to compute a face position in the image, and then
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`adopts a face feature (such as eyes, cheek and jaw, etc) detection
`technique to locate the position of a face feature according to the
`face position, and a skin detection technique to correct the face
`feature according to the detected skin to define a head region,
`and uses a dimension scale of a body region with respect to the
`head region to compute a portrait including the head region and
`the body region, and uses the portrait as a foreground of the
`digital image.
`Ex. 1008 ¶ 14. Petitioner also cites Konoplev’s disclosure of detecting facial
`images. Pet. 23–24 (citing Ex. 1009, code (57), 1:14–16, 1:60–2:9, 2:59–
`3:3, 3:57–58, 6:22–26, 8:15–18; Ex. 1012 ¶¶ 1, 7–9, 24, 25, 29, 47, 61). We
`also are persuaded, and we find, Konoplev teaches this subject matter
`because it discloses that “[f]ace coordinates are acquired from a face
`detection module.” Ex. 1009, 6:22–24.
`b) Second “determining” step and first “applying” step
`Claim 1 recites “determining a correction to apply to the first portion
`of the digital image data, based on a determination that the first portion of
`the digital image data represents a physical object of the predetermined type,
`wherein the determined correction is matched to the predetermined type”
`and “applying the determined correction to the first portion of the digital
`image data to enhance a visual characteristic of the first portion of the digital
`image data, by applying a first amount of the correction to the first portion of
`the digital image data.” Petitioner argues that these limitations are met in
`the following two ways: (1) that Zhang’s feathering process teaches
`determining and applying a correction to the first portion, and (2) that
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`Konoplev’s disclosure of correcting imperfections in facial images, in
`combination with Zhang, teaches these steps. Pet. 24–27.
`(1) Petitioner’s first contention – Zhang’s feathering process
`As to its first contention, Petitioner argues that Zhang’s “head and
`body regions (i.e., the foreground) include a head edge region, a body edge
`region, a head transition region, and a body transition region,” and Petitioner
`argues that Zhang’s “feathering process (i.e., the determined correction) is
`matched to the foreground (i.e., the predetermined type).” Pet. 23, 25. In
`the Decision on Institution, however, we noted that Zhang treats the
`transition regions as separate from the “foreground,” and, thus, Zhang’s
`feathering of the transition region is not processing that is performed on the
`foreground. Dec. on Inst. 11–12. We stated, therefore, that we “question the
`sufficiency of Petitioner’s showing that feathering the transition region
`teaches ‘determining a correction to apply to the first portion of the digital
`image data.’” Dec. on Inst. 13.
`In its Response, Patent Owner argues that Zhang’s transition region is
`separate from the foreground and does not teach “a physical object of a
`predetermined type” for reasons similar to those stated in the Decision on
`Institution. PO Resp. 34–41. During the trial, Petitioner does not address
`our preliminary determination or Patent Owner’s arguments regarding its
`feathering contention. See generally Pet. Reply. During oral argument,
`counsel for Petitioner stated that it was no longer relying on Zhang’s
`feathering process to teach this subject matter. Tr. 11:23–12:12.
`Based on the record developed during trial, we determine that
`Petitioner has not shown that Zhang’s feathering of the transition region
`teaches “determining a correction to apply to the first portion of the digital
`image data” because Zhang’s transition regions are not part of the
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`foreground, which Petitioner identifies as the “first portion of digital image
`data [that] represents a physical object of a predetermined type.” See Dec.
`on Inst. 11–13; Pet. 23 (“Zhang’s foreground (i.e., first portion) represents a
`‘physical object of a predetermined type’ (e.g., face and body).”). Thus,
`feathering is not performed on the “first portion of the digital image” under
`Petitioner’s mapping.
`(2) Petitioner’s second contention – Konoplev’s smoothing
`For its second contention, Petitioner argues “Konoplev describes
`automatically correcting imperfections in a face area of the image.” Pet. 25
`(citing Ex. 1009, 2:4–7, 3:37–45, 3:57–4:25, 6:20–7:62, 8:13–52, Figs. 1–4;
`Ex. 1012 ¶¶ 9, 27, 29–33, 47–57, 61–63). More particularly, Petitioner
`contends that “[t]he detected skin areas are processed through a smoothing
`filter using filtering parameters for removing skin imperfections, e.g.,
`wrinkles and blemishes.” Pet. 25–26 (citing Ex. 1009, 3:37–45, 6:20–30;
`Ex. 1012 ¶¶ 27, 47–48).
`Patent Owner argues that Konoplev discloses applying smoothing to
`all skin areas, not just the face area of an image, and, therefore, Patent
`Owner contends Konoplev’s smoothing is not matched to the face (the
`“physical object of a predetermined type”). PO Resp. 41–44. We agree that
`Konoplev discloses applying smoothing to all skin areas, but Konoplev also
`applies smoothing that is matched to the face area of the image. For
`example, Konoplev discloses the following:
`The entire image is processed through a smoothing filter.
`This filter uses a set of filtering parameters for noise removal.
`First, skin areas are recognized in the image and are processed
`through the smoothing filter for removing skin imperfections.
`Then, parts of the image containing human faces are processed
`through the smoothing filter using a different set of filtering
`parameters for wrinkle removal. Subsequently, the parts of the
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`image containing the human faces are processed through the
`same smoothing filter using yet another set of parameters for
`removing round spots from the faces (i.e., pimples or other
`blemishes).
`Ex. 1009, 3:35–45; see Pet. 25 (citing Ex. 1009, 3:37–45). This is further
`illustrated in Figure 1, which is reproduced below.
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`Figure 1 of Konoplev, reproduced above, is a flow chart for a method of
`image enhancement. Ex. 1009, 6:11–13. Referring to Figure 1, Konoplev
`discloses the following:
`A skin recognition filter is used on the whole image for
`enhancing body skin appearance on the image in step 130. The
`filter uses skin imperfection reducing parameters. Face
`coordinates are acquired from a face detection module (or from
`a user) in step 140. If, in step 150, faces are found in the image,
`the facial skin is enhanced by the skin-recognition filter applied
`to detected facial areas of the image in step 160. The filter uses
`wrinkle reducing parameters.
`Then, in step 170, the facial skin is enhanced by the skin-
`recognition filter applied
`to detected facial areas using
`spots/blemishes reducing parameters.
`Ex. 1009, 6:20–30, cited in Pet. 25–26.
`As shown in Figure 1 and described in Konoplev, the smoothing
`correction applied in each of steps 160 (wrinkle reduction) and 170 (blemish
`reduction) is only performed when a face is found in step 150. Ex. 1009,
`6:24–30. Patent Owner argues that step 130 of Konoplev’s Figure 1
`“demonstrates the ‘skin-recognizing filter’ (i.e., correction) is applied to all
`skin, regardless of whether there are any faces present” and that “[t]his same
`skin-recognizing filter is then applied to identified faces for wrinkle
`reduction and blemish reduction, i.e., the same correction is applied
`regardless of whether there is a face detected.” PO Sur-reply 9–10. There is
`no dispute, however, that the particular smoothing correction in each of steps
`160 and 170 is performed only when a face is found. We find that this
`disclosure teaches a correction that is matched to the face (the claimed
`“physical object of a predetermined type”).
`Furthermore, Patent Owner states that it “does not contend that the
`correction can be applied only to the face or based only on detection of the
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`face, only that the claim is clear in requiring the determination of the
`correction to be based on the detection of the predetermined object type.”
`PO Sur-reply 11 (citing PO Resp. 43). According to Patent Owner,
`“[b]ecause Konoplev applies the skin-recognizing filter to all skin areas,
`regardless of whether it includes a face, the determination of that correction
`cannot be based on the detection of a face in the image.” PO Sur-reply 11.
`To the extent Patent Owner’s argument is that prior art cannot teach
`the claimed subject matter unless it expressly prohibits putting all image data
`through the same correction regardless of whether a physical object of a
`predetermined type is found, this argument is directly contrary to the
`disclosure in the ’132 patent. As shown in Figure 1 of the